Inventive step or non-obviousness is one of the essential criteria for determining if an invention is patentable in India. The Indian Patent Act, 1970 in Section 2(1)(j), defines invention as: “"invention" means a new product or process involving an inventive step and capable of industrial application”. Article 27 of the TRIPS agreement defines patentable subject matter as: “…..patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application…”.

Hence, globally, inventive step is one of the accepted criteria for an invention to be patentable. However, the technical and legal standards for assessment of inventive step may vary according to jurisdiction, based on the patent laws and evolving jurisprudence. In the context of Indian patent law, an invention is non-obvious, if it involves ‘technical advancement’ or has some ‘economic advantage’ which cannot be readily construed by a ‘person skilled in the art’ in the relevant technical field, based on the existing knowledge in the art[1].

While ‘inventive step’/’non-obviousness’ is not a new concept to Indian patent law, time and again, the judiciary has deliberated upon this issue and its evaluation to interpret legal standards and devise tests for determination of obviousness. With the advent of newer technologies, ever-changing technological landscape, evolution of international patent practices, growth, and development of global judicial precedents, jurisprudence around inventive step in India has also been evolving. Several judgements passed by different Indian courts have brought to the fore various interpretations that are playing a crucial role in shaping the legal landscape around the inventive or non-obvious concept.

In the light of said judgements, the present article highlights critical factors that must be considered while determining inventive merit of an invention, both, by the applicant while drafting, and the Indian Patent Office (IPO) while examining.

Inventive step assessment: a two-step process

 Assessment of inventive step, basis which rejections are made by the IPO, remains a challenge. Addressing said issue, the Courts have provided guidelines on how to assess the inventive step. In Microsoft Technology Licensing LLC Vs. Assistant Controller of Patents and Designs[2], where an appeal was filed by Microsoft Technology Licensing (Appellant) against a refusal order passed by the Controller of Patents (Respondent), the Court elaborated on inventive step evaluation. The application in question, titled “MESSAGE COMMUNICATION OF SENSOR AND OTHER DATA”, related to a light weight messaging system for simplifying access and use of sensor data. The respondent had rejected the application primarily on the ground of obviousness in view of a prior art document (D4). While the appellant asserted that the respondent had provided vague and blanket statements with regards to obviousness and had not performed due analysis of the inventive step, the respondent argued that the claimed invention and prior art were essentially similar, differing only in terminology. The respondent further alleged that the differences highlighted by the appellant were insignificant and did not constitute an inventive step as per section 2(j)(a) of the Patents Act.

After due consideration of the facts of the case, the Court opined that assessment of inventive step of an invention is a two-step process, as clearly envisaged in Section 2(1)(ja) of the Patents Act. The two steps being:

a)         identification of feature(s), if any, that involve technical advancement over prior knowledge or having economic significance or both; and

b)         determination of whether the technical advance or economic significance or both of the said feature(s) makes the invention not obvious to a person skilled in the art.

The Court further stated that Section 2(1)(ja) recites the importance of the person skilled in the art (PSITA) and that while assessing inventive step, identification of PSITA is a must. For the subject matter under consideration, the PSITA was identified to be a software engineer with an understanding of hardware/computer electronics. Relying upon Rhodia Operations vs. Assistant Controller of Patents & Designs[3], the Court reiterated that “the level of skill of the PSITA is above average/good and that she possesses the skill set to do the job well. She is not omniscient and that ingenuity or inventiveness cannot be attributed to her since the object of the exercise is to determine whether the claimed invention contains an inventive step.”

The two-step process for determination of inventive step and the requirement for identification of the notional person skilled in the art (PSITA) were also highlighted in Indian Institute of Technology (IIT Madras) IIT PO vs Controller of Patents & Designs and Others.[4] Based on the subject matter of the invention under consideration, the Court said that a chemical engineer working in the field of composite solid propellants would qualify as the PSITA for conducting the obviousness analysis. The requirement of the subject matter being obvious to PSITA was also discussed in The Zero Brand Zone Pvt. Ltd. vs. The Controller of Patents & Designs and Ors.[5] In said case, while addressing the question of obviousness, the Court opined that during evaluation of inventive step, existence of differences between the claimed invention and the prior arts is not relevant. What needs to be considered is whether the claimed invention would be obvious to a PSITA, in view of said documents, or not.

Key Principles for analysis of inventive step

The principles for analysis of inventive step have been laid down in various judgements. In a recent order  passed by the High Court of Madras in Frito-Lay Trading Company-Gmbh vs The Assistant Controller of Patents and Designs[6], where an appeal was filed by Frito-Lay Trading Company-Gmbh (Appellant), the Court contemplated on the issue of obviousness. Referring to the High Court decision in Bristol-Myers Squibb Holdings Ireland Unlimited Company and others v. BDR Pharmaceuticals International Pvt. Ltd. and another[7], where principles related to obviousness were formulated, the Court reiterated the following relevant principles for evaluating whether an invention is obvious or not:

“a) A hindsight reconstruction by using the patent in question as a guide through the maze of prior art references in the right way so as to achieve the result of the claim in the suit, is required to be avoided.

b) There should be no teachings away from the patent in question in the prior art.

c) Though mosaic of prior art documents may be done in order to claim obviousness, however, in doing so, the party claiming obviousness must be able to demonstrate not only prior art exists but how the person of ordinary kill in the art would have been led to combine the relevant components from the mosaic of prior art.”

Accordingly, the judicial precedents as discussed, help clearly decipher how the inventive step must be evaluated while determining patentability of an invention.

Duties of the Patent Office and assessment of inventive step while raising objections

Another issue that is often faced by patent applicants is that the examination report or rejection orders issued by the Patent Office provide citations of the prior arts without providing proper explanation or analysis of their relevance to inventiveness of the invention. At times, the submissions made are not carefully considered. Said issues were tackled in two recent judgements. In Intercontinental Great Brands LLC and Friesland Campina Nederland B.V. vs Assistant Controller of Patents and Designs[8], an appeal was filed by the appellants (Intercontinental Great Brands LLC and Friesland Campina Nederland B.V.) for setting aside the rejection order issued by the respondent with regards to the Application no. 1122/CHENP/2007. Said application related to ‘a soluble foaming protein-free composition’ was refused for lack of inventive step under section 2(1)(ja) as well as subject matter eligibility citing sections 3(e) and 10(4) of the Patents Act, 1970.

Upon examination, the respondent issued a First Examination Report (FER) citing four prior art documents (D1 to D4) for obviousness. The application went through two cycles of examination and was eventually rejected for being obvious in light of D1-D4 as one of the grounds. The appellants contended that the respondent had not only neglected their submissions, the documents D1-D4 as cited were not relevant to the invention in question. The appellants also asserted that the respondent had not provided any reasoning whatsoever as to why the differentiation provided in response to FER and the written submissions was not found to be tenable. After perusal of the rejection order and contemplating the submissions made during the proceedings, the Court concluded that the respondent had not considered the submissions made by the appellants and therefore, the matter ought to be remanded back and considered by some other Controller. The appeal was thus, allowed.

Similarly, in an appeal filed in NHK Spring Co Ltd. vs Controller of Patents and Designs[9]; the primary contention of the appellant (NHK Spring Co Ltd.) was that the impugned order passed lacked sufficient justification with respect to the establishment of obviousness in view of the cited prior arts. On perusal of said order, the Court observed that while various prior arts were cited by the respondent, no attempt was made to analyse how the teachings of said prior arts would be obvious to a person skilled in the art and how said teachings could be combined to arrive at the invention in question. The Court stressed upon the requirement of rigorous examination (and not mere surface analysis) of a patent application and careful gauging of the inventive merit of an invention considering the invention as a whole. Citing the Manual for Patent Office Practice and Procedure dated 26th November, 2019, it was reiterated that fragmentary analysis of claims must be avoided. Mere presence of individual elements of claimed subject matter, which may appear to be obvious when considered in isolation, is not sufficient to demonstrate obviousness. Further, contemplating on the issue of assessment of inventive step, the Court also referred to the four-step framework delineated in the case of Windsurfing International v. Tabur Marine[10] which is as given below:

“(i) identifying the inventive concept embodied in the patent;

(ii) imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date

(iii) identifying the difference if any between the matter cited and the alleged invention; and

(iv) deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.”

The Court also placed reliance on Bristol-Myers Squibb Holdings vs. BDR Pharmaceuticals International[11] to assert that while mosaicing of prior arts for alleging obviousness is allowed, it is required to demonstrate how a person of ordinary skill in the art would be motivated to combine said documents to arrive at an invention. The Court held that the decision issued by the respondent inadequately addressed the crux of the invention and “that mere citation and juxtaposition of prior arts do not suffice to establish obviousness”. The impugned order was thus, set aside and the matter was remanded back for fresh consideration. The appeal was allowed.

The Courts have thus been emphasizing on a rational and objective analysis of inventive step putting the Patent Office strictly to proof. In another matter in Alimentary Health Limited vs. Controller of Patents and Design[12], whereby the Court stated that, “the Controller ought to (have) analyse(d) the existing knowledge and articulate how a skilled person could logically and predictably progress from this knowledge to the invention claimed. Without such analysis, the rejection of a patent application on the grounds of lacking an inventive step is untenable, unless the absence of inventiveness is unequivocally evident.” In said case, an appeal was filed by Alimentary Health Limited (Appellant) against the refusal order passed by the Controller of Patents & Designs (Respondent), rejecting the patent application no. 3989/DELNP/2012, without giving adequate reasoning about the obviousness rejection. On perusal of the rejection order, the Court observed that said order failed to provide ‘a persuasive and detailed analysis as required by law’. The Court relying on previous jurisprudence reiterated that the Patent Office must issue a ‘speaking order,’ with detailed comparative analysis of the existing knowledge and the claimed invention while deciding the objection of section 2(1)(ja) of the Act.

Citing the Supreme Court judgements in Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries Ltd.[13] and Hoffmann-La Roche Ltd & Anr. v Cipla Ltd.[14], the Court also emphasized upon the necessity for an objective assessment of obviousness and inventive step. While relying on various judicial precedents, the Court reiterated the importance of objective analysis while avoiding hindsight bias to encourage genuine innovations. The rejection order was set aside and the matter was remanded back to the Controller for a fresh consideration.

As evident, the judgements provide detailed insights into critical determinations that must be made while formulating an objection on inventive step.

Managing inventive step objection

While it is true that the Patent Office must provide proper reasoning while raising an inventive step objection, it is also required on the part of the applicants that they ought to respond to the objection in a proper manner. Due consideration must be taken both during the drafting as well as the prosecution stages. Section 2(1)(ja) of The Patents Act, 1970 precisely outlines that an invention must demonstrate ‘technical advancement’ or ‘economic significance’ or both to satisfy the inventive step requirement. Accordingly, said factors must be unambiguously demonstrated in the complete specification, in an explicit manner. Wherever applicable, sufficient experimental data must be provided to illustrate both technological advancement as well as economic relevance. The importance of experimental data to establish economic significance and inventive step was brought to the forefront, yet again, in Indian Institute of Technology (IIT Madras) IIT PO vs Controller of Patents & Designs and Others.[15] In said case, the appellant, while claiming economic significance of the invention argued that since the invention eliminated the use of external reagents, as taught by the prior art, and used the filtrate material as a source for potassium; it has economic significance because it results in cost reduction. However, no data for the same was provided in the specification. The Court concluded that, “without any experimental data to compare the costs of using filtrate material, which requires frequent changing, vis-a-vis using an external reagent, the economic significance of the claimed invention cannot be established.” Therefore, the value of experimental data should not be underestimated.

Concluding Remarks

Evaluation of inventive step is crucial for establishing patentability and therefore, due care must be taken while drafting a patent application and also while responding to an objection raised in an office action. It is heartening to note that the Courts are now taking cognizance of the fact that objections raised during prosecution of a patent application must be valid and should be based on thorough technical evaluation and not ‘superficial analysis’. The recent judgements as passed by the Indian courts will likely ensure that high standards of scrutiny are maintained while examining patent applications.