Disclaimer

The web site is designed for general information purposes only and should not be construed to be formal legal advice. This website is not intended for any kind of solicitation or advertising.

In case you require any advice, you are requested to contact us before acting on any information. The firm takes no responsibility for any information that may be found not upto date/ incorrect/ insufficient. 

This website does not in any way establish or intend to establish an attorney-client relationship, nor is it intended to be used as such an invitation for attorney-client relationship.

The viewer acknowledges that there has been no inducement, invitation or solicitation of any nature whatsoever from Aswal Associates or any of its members/ Attorneys/ Advocates/ Lawyers to create an attorney-client relationship through this website.

Decline

PATENT- INTERPRETATION OF OBVIOUSNESS

Definition:

Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.

 
To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

 

Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.



INDIA

A. Obviousness under 1970 Act


Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.



As inventive step was not defined in an invention, there was no such provision during examination.



Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition.



(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-



(f) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;


Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.



B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)


No change in the definition of invention till 2003


Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.


After which the inventive step was also considered during the examination.


And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.



C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)



The Definition of Inventive step was further revised.


Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.



Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.



But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.



D. Approach of Indian Patent Office


1. Considers novelty and inventive step as one or the same thing.
The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.



2. Gives importance even to “A” category citations in the ISR/IPER for construction of Inventive step.


In a mechanical manner the Patent Office gives importance to even ‘A’ category citations and requires elaboration and difference in terms of inventive steps with regards to such cited arts.

3. Requires characterization in the claims-


It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.


4. As per the Manual of Indian Patent practice: The inventive step has to be determined in the following manner.


Has to be non-obvious when compared with the state of art,
State of mind (Flash of Genius) is to be looked into, the following question has to be borne into mind “would a non-inventive mind have thought of the alleged invention?” if answer is “no”, then the invention in non-obvious. (In other words whether the invention would have occurred to a person skilled in the art, if yes, then it is obvious.)


5. Whether the invention involves exercise of any skill or ability beyond than what is expected of a person skilled in the art. Combining the teaching of documents (Mosaics) with the art.



Although as per the manual of Patent practice for consideration and determination of the inventive step, the invention has to be looked as a whole and no conclusion should be made by taking individual parts of the claims that might be known or found to be obvious, but still the practice differs from the manual and without taking regard to whole claims/ invention, objections are raised and the Applicant is made to himself point out the inventive step in the invention.



INTERPRETATION OF OBVIOUSNESS IN FOREIGN COUNTRIES:


The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.


European Patent Office


Under Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the “Problem solution approach”.

Problem-solution approach:


In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-


Identifying the closest prior art, i.e., the most relevant prior art;


Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and


Examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.


This step is conducted according to the "could-would approach". Under this approach, “the question to address” in order to assess whether the invention involves an inventive step is as follows:


Is there any teaching in the prior art, as a whole, that would (not simply could) have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], th

News & Updates

Quick Contact

Recent Activity

Date : May 20, 2017
Location: Barcelona Spain

INTA 139th Annual Meeting

INTA 139th Annual Meeting was held in Barcelona Spain from 20th to 24th May 2017

View All

Our Services