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Determination of Obviousness/Inventive Step by the European Patent Office


Basic Patentability requirements are

  • NOVELTY/NEW – Not previously known by others or previously available in the  public domain
  • USEFUL-  Must have practical utility to accomplish an useful purpose
  • NONOBVIOUSNESS / INVENTIVE STEP-The invention must not be obvious to one of ordinary skill in the art.
The Inventive step and Non-obviousness implies the same meaning in most patent laws. The expression “Inventive step” is used in Europe while “Non-Obviousness” is used in United States.
Need for Inventive step 
Inventive step is a critical element in patentability. To obtain a patent, the patent system expects something more than merely novel subject matter. The European Patent Convention (EPC) states that, an invention must be new and must involve an inventive step. One of the main reasons is that, it is relatively easy to make something which is merely new, for example by adding minor workshop modification to something that is already known. The requirement of inventiveness or non-obviousness has thus been developed over time so as to exclude from patentability, minor matters that are considered obvious.
Evaluating Inventive step 
As per Art 56 of EPC "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art".
  • State of the art: "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the filing of the European patent application"
  • Person skilled in the art: “should be presumed to be a skilled practitioner in the relevant field of technology, who possesses average knowledge and ability, and is aware of what was common general knowledge in the art at the relevant date ".
The boards of Appeal of the European Patent office (EPO) have developed an approach, called the "Problem-Solution approach”. This problem solution approach is applied by the examining division, the opposition divisions and the boards of Appeal of the EPO to decide whether an invention involves inventive step. The EPO considers it essential for reason of legal certainty to devise a legal test which could be applied in all situations and which goes beyond simply asking "is it obvious to a person skilled in the art?” 
Problem-Solution Approach 
The problem-solution approach essentially consists three steps:
  •        Selecting the closest prior art
  •        Formulating the technical problem
  •        Assessing the obviousness of the claimed solution
Selecting the closest Prior art 
When selecting the closest prior art, the first consideration is that, it should be directed to a similar purpose or effect as the invention, or at least belong to the same or a closely related technical field. It is important to remember that, the document, which is most relevant for assessing novelty, is not necessarily the most promising starting point for assessing inventive step. 
In general, the closest prior art corresponds to a similar use as the claimed invention and requires the minimum of structural and functional modifications to arrive at it. The closest prior art must be assessed from the point of view of the skilled person on the day before the filing date or priority date of the claimed invention. 
Assessing the technical difference 
In the second stage of the problem-solution approach starts with the question “what is the difference, in terms of the technical features, between the claim and the closest prior art?" This question arises only when novelty of the invention is satisfied.
The difference between the closest prior art and the claimed invention helps in determining the presence of an invention step. This difference is formulated in terms of features, such as:
  • additional features
  • modified features
  • functional features
Example: The claimed invention is directed to a table having a flat surface supported by four legs, one of them being telescopic, i.e. retractable or extendable thus having an adjustable length. The inventor argues that the claimed invention solves the problem of wobbling tables. The closest prior art is a normal table having four legs of fixed length.In terms of the technical features, the technical difference between the claim on the one hand and the closest prior art on the other is that, one leg of the table is telescopic. 
The second question in the second stage is determining the technical effect caused by the difference, which defines the objective technical problem.  
The technical effect is the result of the difference achieved by features which distinguish the claimed invention over the closest prior art. The features which contribute to the technical character of the invention should be considered. 
One starting point for the assessment of the technical effect can be the analysis of what the applicant states in the description to be the effect of his /her invention. However, one might have a closest prior art different from the starting point of the applicant, the technical effect might be correspondingly different. It may also be that both the claimed invention and the closest prior art achieve the same technical effect, only in different ways.  
Considering the same example mentioned above, in which the technical effect caused by this difference is that the table can be placed on an uneven surface without wobbling. 
The last question in the second stage is, examining the objective technical problem underlying in the claimed invention. In terms of the problem-solution approach, the "objective technical problem" comprises the reason for and the task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. The objective technical problem is based on objectively established facts, in particular those appearing in the prior art revealed in the course of the proceedings. 
A particular difficulty in assessing inventive step arises when the distinguishing features (the difference) and the corresponding result achieved (technical effect) are already known.
Considering the example, the objective technical problem underlying the claimed invention is how to modify the table known from the closest prior art so that it does not wobble when placed on the uneven surface. In this case, the problem proposed by the applicant is considered to be the objective technical problem. 
In the third stage of the problem-solution approach, it is determined whether there is any teaching in the prior art as a whole that not only could, but would have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within terms of the claims, and thus achieving what the invention achieves. 
With reference to the example, the closest prior art is a normal table having four legs of fixed length. The technical difference, in terms of the technical features, between the claim on the one hand and the closest prior art on the other is that, one leg of the table is telescopic. The technical effect caused by this difference is that the table can be placed on an uneven surface without wobbling. The objective technical problem underlying the claimed invention is how to modify the table known from the closest prior art so that it does not wobble when placed on an uneven surface. 
A second prior art document discloses a milk stool having three legs as used by milkers in cow sheds or in the field. The document acknowledges that the three-legged construction provide stability to these stools, which are normally used on uneven surfaces. 
The invention is not obvious, since the person skilled in the art of furniture would not find in this second document any indication to arrive at the claimed subject-matter when starting from the closest prior art and confronted with the objective technical problem. Although the second document is confronted with the same problem, the combination of the two documents would lead to a table having three legs. These tables would be stable on an uneven surface, thus solving the problem in an alternative way. No hint is given to providing a telescopic leg. It is therefore concluded that the claimed invention is not obvious and is therefore inventive. 
Combining pieces of prior art 
During the problem-solution approach, a situation occurs where the invention is a solution to a plurality of independent "partial problems”. In such a case, it is necessary to separately assess, for each partial problem, whether the combination of features solving the partial problem is obviously derivable from the prior art. Hence, a different document can be combined with the closest prior art for each partial problem. For the subject-matter of the claim to be inventive, it suffices however that one of these combinations of features involves an inventive step.
In determining whether it would be obvious to combine two or more distinct disclosures, the examiner should also have regard in particular to the following:
  • whether the content of the disclosures (e.g. documents) is such as to make it likely or unlikely that the person skilled in the art, when faced with the problem solved by the invention, would combine them – for example, if two disclosures considered as a whole could not in practice be readily combined because of inherent incompatibility in disclosed features essential to the invention, the combining of these disclosures should not normally be regarded as obvious;
  •  whether the disclosures, e.g. documents, come from similar, neighbouring or remote technical fields;
  • the combining of two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another. It would normally be obvious to combine with a prior-art document a well-known textbook or standard dictionary; this is only a special case of the general proposition that it is obvious to combine the teaching of one or more documents with the common general knowledge in the art. It would, generally speaking, also be obvious to combine two documents one of which contains a clear and unmistakable reference to the other. In determining whether it is permissible to combine a document with an item of prior art made public in some other way, e.g. by use, similar considerations apply.
Combination vs. juxtaposition or aggregation 
An invention claimed is considered as a whole. When a claim consists of a "combination of features", it is not correct to argue that the separate features of the combination taken by them are known as obvious and therefore the whole subject-matter claimed is obvious.
However, the invention claimed is merely an aggregation or juxtaposition of features and not a true combination; it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step. A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. 
Case study for the claimed invention vs the prior art Document for the lack of Inventive step  
According to the art 100(a) and (b) the opposition for the granted patent can be raised on the grounds of the invention claimed in the complete specification does not involve inventive step. This was well established in the case TeliaSonera Finland Oyj vs Giesecke & Devrient Gmbh order on 19 February 2013 case number T 0662/10. The invention is relating to the method for the utilisation of applications stored on a subscriber identity module (SIM) and for the secure treatment of information associated with them, the closest article disclosed is Digital cellular telecommunications systems; Specification of the Subscriber Identity Module – Mobile Equipment interface (ME). 
Comparisons were made and with respect to the claims, appellant 1 specifically argued that the claimed system required more than one operating mode to be available for selection by a respective predetermined code. The board however noted that the presence of more than one operating mode is known from prior art and that the selection between them would have been obvious to the skilled person and the reasons were pointed out. 
The two reasons pointed out were: 
I.            The term "subset mode" had no specific meaning in the art, it is understood by the board in its broadest sense and, hence, includes a communication mode. This understanding was not changed by the statement in the description of the patent in suit that a "subset mode" is used as a synonym for a "security mode" , since a communication mode which uses ciphering keys, as in GSM, may also be understood as a security mode. Further, the board did not see any difference between a "normal" communication mode, as referred to in the claim, and a communication mode. 
With this understanding, which is at variance with that of the opposition division, the problem underlying the claimed subject-matter when starting from prior art may be seen in expanding the functions of the known SIM card in order to give the user a choice between several usage modes, at least one of which comprises a restricted right of access. 
II.            The problem and its solution were already suggested to the skilled person by the prior art. The file structure shown in prior art includes at the same level as DFGSM the further files DFTELECOM and DFIS-41. Prior art is specifically concerned with the interface between the SIM and the ME for use during the network operation phase of GSM, with the consequence that after SIM activation the ME selects DFGSM . Considering that further network operation possibilities like DFTELECOM and DFIS-41 exist on the SIM card, it would have been obvious to the skilled person that a user should be able to make use of them.
To know the case in detail please click on the link http://www.epo.org/law-practice/case-law-appeals/pdf/t100662eu1.pdf
Inventive Step is one of the main reasons for revocation of a patent application filed. Statistics suggest that 43% of the patents have been revoked due to lack of inventive step. So it’s always in the best of interest that a prior art search is done before the priority date and follow the problem-solution approach, and arrive at a point wherein an individual or an applicant can be confident enough to go ahead with the patent application. In addition, when a prior art compared with the invention to be claimed has found to lack inventive step, then the applicant should make sufficient improvement/modification that were left out in the prior art. To conclude with a prior art search is a must before filing a patent application so that one can avoid the cost of legal proceedings.
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Determination of Obviousness/Inventive Step in United states of America

Introduction – Non obviousness

Non obviousness is one of the essential patentability requirements to obtain a patent in United States, as stated under section 35 U.S.C. § 103. The purpose of including a non-obviousness requirement is to encourage innovations that are not mere combination of prior art, without any technical advancement.  

 Title 35, United States Code 103(a):

 A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art, to which said subject matter pertains.
The U.S. Patent Act of 1952 added 35 U.S.C. § 103, which effectively codified non obviousness as a requirement to obtain a patent. Hotchkiss vs. Greenwood, 52 U.S. 248 (1850), was the first US Supreme Court case to introduce the concept of non-obviousness as a requirement of patentability. Prior to the patent act 1952, novelty and utility were the only grounds for patentability. The Supreme Court first attempted to articulate the process for determining non obviousness in Graham v. John Deere (1966). The Court held that non obviousness could be determined by: 
  • Determining the scope and content of prior art 
  • Analysing the differences between the prior art and the claims at issue
  • The level of ordinary skill in the pertinent art 
  • Evaluating evidence of secondary considerations. Secondary considerations include commercial success, a long felt but unmet need for a device, and the failure of others to solve the particular problem addressed by the invention in question. 

Further, the Supreme Court in KSR v. Teleflex case identified a number of rationales to support a conclusion of obviousness, which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. 

Case Law:

Teleflex, Inc. sued KSR International, claiming that one of KSR's products infringed Teleflex's US 6237565 entitled “Adjustable pedal assembly with electronic throttle control”. KSR argued that claim 4 of US 6237565 was obvious under 35 U.S.C. § 103 and therefore invalid. The district court ruled in favor of KSR, but the Court of Appeals for the Federal Circuit reversed the order in January 2005. However, on April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, stating that claim 4 of US 6237565 was obvious under the requirements of 35 U.S.C. §103. 

Guidelines to evaluate obviousness 

Combination of prior art elements: 

One of the steps to determine obviousness is to articulate whether the claimed invention is a result of mere combination of prior art elements. It is always desirable to find, if a person skilled in the art can come up with the claimed invention by combining the elements of known methods, wherein each element would have performed the same function as it would have separately. Sundance, Inc. v. DeMonte Fabricating Ltd is a hallmark case for revocation of patent based on aforementioned statement. Sundance, Inc invention was related to a segmented and mechanized cover for trucks, swimming pools, or other structures. Sundance, had sued DeMonte Fabricating Ltd for infringement of their US patent 5026109. However, DeMonte Fabricating Ltd argued that claim 1 of US patent 5026109 was invalid and obvious citing two prior art references. The first prior art reference  taught a reason for making a segmented cover with ease of repair, in which a single damaged segment could be readily removed and replaced when necessary. A second prior art reference taught the advantages of a mechanized cover for ease of opening. The Federal Circuit noted that the first reference and the second reference would perform in the same manner it would have individually, even after combination. Therefore, it was obvious for a person of ordinary skill in the art  to expect that addition of replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers

Substitution of elements to obtain predictable results 

Substitution of an element by another element (analogue) performing similar function is considered as one of the grounds for determination of obviousness. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) had claimed decaffeinating coffee or tea from fatty material. In re Fout, had substituted an evaporative distillation step for separating caffeine from oil. However, prior art disclosed an aqueous extraction step (Pagliaro) and direct distillation process (Waterman) for decaffeinating coffee or tea from fatty material. The court stated that both Pagliaro and Waterman taught a method for separating caffeine from oil and therefore, it is obvious for a person skilled in art to substitute a method for another performing similar function. 

Known technique to improve similar devices: 

A method is said to be obvious if it enhances a particular class of devices (methods, or products) known in the prior art by using a known technique. In re Nilssen case, the invention was directed to a means by which the inverter can be disabled if current exceeded pre-established threshold level for a specified period. The United States Patent and Trademark Office Board of Patent Appeals and Interference rejected claims 1-4, 9-11, and 16 of Nilssen's patent application Serial No. 476,150 on the ground of obviousness citing two prior art references as provided below: The first prior art USSR Certificate No. 729,738, described a device for indicating the high-load condition via a control means in an inverter, but did not indicate the specific manner of overload protection.The second prior art U.S. Patent No. 3,305,793(Kammiller) disclosed disabling the inverter circuit by means of a cut off switch if there exist a high load current condition. The federal circuit stated that it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to activate a cut off switch to render the inverter inoperative as taught by Kammiller. 

Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results 

Applying a known technique to a known device (method or product) for improvement of the device, and finding that the results obtained over such improvement would have been predictable by a person of ordinary skill in the art can be considered as obviousness. Nilssen case can be cited in this context as well.  

Obvious to try 

The concept of “obvious to try” is a quite sensible requirement for determination of obviousness. “Obvious to try” can be examined as follows:

  • The need for designing the claimed invention to solve a problem being recognised at the time of invention.

  • Existence of a finite number of known solutions for the problem recognised

  • Implementing one of the known solutions, which is obvious to a person skilled in the art for solving the problem recognised.

Pfizer, Inc. v. Apotex, Inc 

Pfizer had been selling amlodipine besylate drug in tablet form under the trademark Norvasc® in U.S. At the time of invention of amlodipine besylate, amlodipine (Apotex) was known to posses similar therapeutic properties as were claimed by Pfizer for amlodipine besylate. Pfizer however, argued stating that amlodipine besylate had better manufacturing property as compared to amlodipine.

Court’s decision: 

The court found that a person skilled in the art would have obviously tried to formulate the salt form of the compound, if he had problems with the machinability of amlodipine and would have been able to narrow the group of potential salt-formers to a group of 53 anions known to form pharmaceutically acceptable salts, which would be an acceptable number to achieve “a reasonable expectation of success.”

Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art

The scope and content of the prior art, whether in the same field of endeavor as that of the applicant’s invention or a different field of endeavor, including a similar or analogous device should be identified to examine obviousness. Further, design incentives or market forces prompting to adaptation of the known device (method, or product); the differences between the claimed invention and the prior art encompassed in known variations or in a principle known in the prior art are important aspects for determining obviousness relating to the claimed invention. In addition to the above mentioned criteria for determining obviousness, it is also essential to know how a person with ordinary skill in the art, in view of the identified design incentives or other market forces, would have implemented the claimed variation of the prior art, and how would have been the claimed variation predictable to a person of ordinary skill in the art.

The claimed invention in Ex parte Catan, 83 USPQ2d 1568 (bd. Pat. App. & Int. 2007) was a consumer electronics device using bio authentication for enabling sub users to place orders up to a preset maximum credit over.

The first prior art (Nakano) disclosed a consumer electronics device like the claimed invention, which provided security through a password authentication rather than a bio authentication device. The second prior art (Harada) disclosed the use of a bio authentication device (fingerprint sensor) on a consumer electronics device (remote control) to provide bio authentication information (fingerprint). The third prior art (Dethloff) disclosed that it was known in the art at the time of the invention, to substitute bio authentication for PIN authentication to enable a user to access credit via a consumer electronics device.

The Board stated that a person with ordinary skill in the consumer electronic device domain at the time of the invention would have been familiar with using bio authentication information interchangeably with or in lieu of PINs to authenticate users. The Board concluded that it would be obvious to a person with ordinary skill in the art of consumer electronic devices to update the prior art password device with the modern bio authentication component and thereby gain, a secure and reliable authentication procedure.

TSM test 

TSM stands for teaching, suggestion and motivation. A claimed invention fulfils the requirement of being non obviousness, if combination of know elements, which forms the invention, not motivated, suggested or taught in prior art. 


The very fact that a number of approaches have been suggested to determine whether a proposed invention is obvious or not, is an evidence that determining obviousness is a complex subject. Hence, it is important for patent professionals to be abreast with the subject, so that informed advice can be provided to clients at least based on existing guidelines.

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Determination of Obviousness/Inventive Step- Indian Approach

Patentability requirements

For an invention to be patentable:

  •  it has to be novel (new)
  • it has to involve an inventive step (non-obvious)
  • it has to be industrially applicable (can be made or used in an industry)
Apart from satisfying these criteria, the invention should also not fall under the category of non patentable subject matter, as per Section 3 of the Indian Patent Act.
It is important that before applying for a patent, one tries to ascertain whether the proposed invention satisfies all these criteria for the successful grant of a patent for a proposed invention. The criteria related to novelty and industrial applicability are generally regarded as being well defined and understood based on the definition provided in the Act. However, the concept of non obviousness or the presence of inventive step in a proposed invention is still under debate among the patent office, courts and patentees.

Indian defining of “Invention” – History and Evolution   

 First definition, 1972  

“Invention” means any new and useful-   

(i) art, process, method or manner of manufacture;   

(ii) machine, apparatus or other article;   

(iii) substance produced by manufacture.  

and includes any new and useful improvement of any of them, and an alleged invention.

As can be seen above, the phrase “inventive step” was not even included in the definition.  

Second definition, 2002  

(i). “invention” means a new product or process involving an inventive step and      capable of industrial application;  

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

The phase “inventive step” was included in the definition of “invention”. Further, the phrase “inventive step” was also defined.

Current definition, 2005:   

(i). “invention” means a new product or process involving an inventive step and capable of industrial application;   

(ii) “inventive step” means a feature of an invention that involves 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.

The definition of the phrase “inventive step” was amended to broaden the scope of “inventive step”.  

“Inventive Step” as laid by the Indian Patent Act

The term “inventive step” plays a vital role in deciding whether a patent should be granted to a proposed invention.

As per sec 2 (l) of the Patents Act, a new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.

In 2005, India, for the first time, defined as to what constitutes an "inventive step" by incorporating a new provision in the definition section of the Patents Act. Section 2(1)(ja) of the Act defines "inventive step" to mean "a feature of an invention that involves 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".
If an invention lacks the presence of an inventive step, then, this deficiency can be considered as valid grounds for opposition for the grant of a patent, under section 25 (1)(e) and 25 (2)(e) and for revocation under section 64 (1)(f) of the Act.    

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries: Case Law Interpretation on Inventive step

This case can be considered to be the most important case in interpretation of inventive step in the Indian jurisdiction. Though the case was decided in 1978, the principles laid down in the case are followed even today and have been codified in the Indian Patent Act.

The plaintiff (Hindustan Metal Industries, a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur) in this case claimed to have invented a device and method for manufacturing utensils, introducing improvement, convenience, speed, safety and  better finish, in the  old prevalent method which was fraught with  risk to the workers, in as much as the utensils used to fly off from the headstock, during the manufacturing process. The plaintiff got the invention patented, as an assignee, under the Indian Patent and Designs Act, 1911 on May 6, 1951 with effect from December 13, 1951. In September1952, the plaintiff learnt that the defendant (Bishwanath Prasad Radhey Shyam, a concern carrying on the business of manufacturing dishes and utensils in Mirzapur) was using and employing the method under the former’s patent. The plaintiff served a notice upon the defendant asking him to desist from infringing the plaintiff’s patent and further claim damages for Rs. 3000. The validity of the patent was challenged by defendants on the ground of lack of novelty and inventive step and also filed a counter claim praying for the revocation of the plaintiff’s patent on the same ground. A division bench of a district court of Allahabad started its analysis of inventive step and after considering the prior art in the case, stated that the patented invention was merely an application of an old invention, known for several decades before the plaintiff’s patent,  which was no more than a workshop improvement. The court as a result had issued the petition for revocation on the patent. The plaintitiff made appeals to a division bench of the High Court, where the appellate bench concluded that the method of manufacture did not involve any inventive step or novelty. Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application, the Court observed that the novelty of the invention was negated. In the light of its analysis, the court concluded that the invention lacked novelty and inventive step. 

Assessment of Inventive Step

If, a product or a process is novel, the next question that arises is "Is the approach obvious and if it not then what is the depth of the inventive measures taken by the inventor”. To determine obviousness is to find out whether the person, with ordinary skill in the art, would have come up with similar innovation for the technical problem under similar circumstances without being provided with the solution.

Since the Patents Act (1970) was brought into force, there have been a few cases in India that have dealt with the obviousness issue extensively. The Supreme Court held that obviousness has to be strictly and objectively judged. The Supreme Court further recognized that obviousness is something that is a natural suggestion of what was previously known.

A test to determine whether a document can negate the existence of inventive step is as follows:

Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by a patentee but without knowledge of the patented invention, would he have said, "this gives me what I want". To put it in another form: "was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?” 

Novartis v. Union of India case law interpretation on Obviousness  

Novartis filed an application for grant of patent for chemical compound called Imatinib Mesylate which is a therapeutic drug for chronic myeloid leukemia and certain kinds of tumours and is marketed under the names “Glivec” or “Gleevec” at the Chennai Patent Office on July 17, 1998. In the application it claimed that the invented product, the beta crystal form of Imatinib Mesylate, has  more beneficial flow properties better thermodynamic stability and lower hygroscopicity than the alpha crystal form of Imatinib Mesylate and further claimed that the aforesaid properties makes the invented product novel. The patent application had attracted five (5) pre-grant oppositions in terms of section 25(1) of the Act. The Assistant Controller of Patents and Designs heard all the parties, on December 15, 2005, as provided under rule 55 of the Patent Rules, 2003, and rejected the appellant’s (Novartis) application for grant of patent to the subject by 5 (five) separate, though similar, orders passed on January 25, 2006 on the opposition petitions. The Assistant Controller held that the invention claimed by the appellant was anticipated by prior publication, i.e., the Zimmermann patent; that the invention claimed by the appellant was obvious to a person skilled in the art in view of the disclosure provided in the Zimmermann patent specifications. The Supreme Court of India rejected Novartis patent plea on April 1, 2013
Person skilled in the art                                                  

Obviousness is judged based on the hypothetical construct of a "person of ordinary skill in the art". The person of ordinary skill in the art must:

  • belong to the relevant field.
  • look at the prior art from a position of his personality, considering his/her interest in risk taking.
  • be well aware of the fact that even a small structural change in a product or in a procedure can produce dramatic functional changes.
The person of ordinary skills in the art must be given the problem and asked whether he can solve it. This is what is referred to as the 'Hindsight Element'. Obviousness is not established by drawing a line from the solution to the problem, or by finding the explanation for how the inventor did it. It is not permissible to look at the invention and try and figure out the logic behind it and then look for prior art documents which support disclosures throwing light on such logic. Therefore, the person of ordinary skill in the art would constantly be conditioned by the prior art and, before taking action, would carefully ponder any possible modification, change or adjustment against the background of the existing knowledge.  

India has been witnessing an increase in patent enforcement activities. Going forward, one can anticipate much more refined tests for determining the presence of inventive step in inventions. It is recommended that patent practitioner keep themselves educated about this fascinating topic of “inventive step/obviousness” and provide informed opinions.

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