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20 April, 2018
Indian Patent law in the year 1972 originally defined the term 'invention' as "any new and useful art, process, method or manner of manufacture, machine, apparatus or other article, substance produced by manufacture; and includes any new and useful improvement of any of them". The phrase "inventive step" was not even included in the definition of invention back then. Later on in the year 2002, the phrase "inventive step" was included in the definition of "invention". Also, the phrase "inventive step" was defined separately.
More specifically, the term 'invention' was redefined as "a new product or process involving an inventive step and capable of industrial application" and 'inventive step' for the first time was defined as "a feature that makes the invention not obvious to a person skilled in the art". After that in the year 2005, the phrase 'inventive step' was redefined "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", whereas the definition of the term 'invention' remained the same as per amendments done in the year 2002.
As per the latest definition, the inventive step is nothing more than a feature of an invention which satisfies a couple of criteria. The first criterion is that said feature needs to provide one or more advantages over the current state of the art. The advantages may be technical or economic or both. Here economic significance is being referred to as economic advantage for easy of understanding only, otherwise there is no difference. In one example, a new device having a unique feature will involve an inventive step if said unique feature makes the new device perform better than the known devices of same class provided said unique feature is not obvious a person skilled in the art. Similarly, a new device having a unique feature will involve an inventive step if said unique feature makes the new device inexpensive than the known devices of same class provided said unique feature is not obvious a person skilled in the art. Accordingly, it becomes important at the time of patent drafting to mention economic advantages, if any, in addition to technical advantages of different features of the invention. In one example, the economic advantage may be achieved due to features pertaining to simple construction, less number of parts, choice of material, change in process, etc.
When a feature under consideration provides neither technical advantage nor economic advantage over the state of the art the time of invention, the first criterion remains unsatisfied and claimed invention must lack inventive step in that case. This means having a non-advantageous feature in a claim, however non-obvious it may be to a person skilled in the art, cannot alone impart an inventive step to that claim. At the same time, the mere presence of technical and/or economic advantages is inadequate to establish the presence of an inventive step in a claimed invention. It must also be shown as per the second criterion that said feature is a non-obvious feature for a person skilled in the art of claimed invention.
The Supreme Court of India has laid down the following criteria for assessing inventive step in M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries: "It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent" [AIR 1982 Supreme Court 1444]. Apart from this, any of the tests established across the globe for proving non-obviousness may be utilized for this purpose. Examples of these tests include a problem-solution approach followed by EPO; Windsurfing test or Pozzoli test followed by UK-IPO; and Graham factors, TSM test, KSR decision followed by USPTO. However, when a differentiating feature of the claimed invention is held as non-obvious to a person skilled in the art, but that feature fails to provide any technical and/or economic advantage over the current state of art – the claimed invention will still lack an inventive step in India.
So apart from proving non-obviousness of differentiating features of the claimed invention to a person skilled in the art, it is equally important to indicate technical and/or economic advantages of those differentiating features of the invention, thereby satisfying both the criteria provided under the latest definition of the phrase 'inventive step'.
During inventive step assessment, most of the times focus remains on technical advantages of the claimed invention, but not on economic advantages. However, economic advantages, such as reduced manufacturing cost, reduced operation cost, reduced maintenance cost, etc., become important especially in cases where the claimed invention is technically not better than what is described by the cited prior arts.
To conclude, a technically inferior solution than the prior art solutions may also pass inventive step assessment in India as long as the solution is non-obvious to a person in the art and achieves economic advantages.
For further information, please contact:
Joginder Singh, LexOrbis
mail@lexorbis.com
