Tag Archives: patent obviousness
Determination of Obviousness/Inventive Step by the European Patent Office
FollowIntroduction
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.
- 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 ".
- Selecting the closest prior art
- Formulating the technical problem
- Assessing the obviousness of the claimed solution
- additional features
- modified features
- functional features
- 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.
- Determination of Obviousness/Inventive Step in United states of America
- Determination of Obviousness/Inventive Step- Indian Approach
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
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):
- 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.
Conclusion:
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.
You may be interested in reading our articles:
- Determination of Obviousness/Inventive Step by the European Patent Office
- Determination of Obviousness/Inventive Step- Indian Approach
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
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)
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".
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
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.
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.
You may be interested in reading our articles:
- Determination of Obviousness/Inventive Step by the European Patent Office
- Determination of Obviousness/Inventive Step in United states of America
This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License
