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INTERPRETATION OF OBVIOUSNESS IN ASIA

 

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.


KOREA:

In accordance with the Korean Patent Examination Guideline (KPEG) the following procedure is carried out for determining inventive step:


whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;

whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; and

whether the claimed invention has any advantageous effect compared to the prior art.

Until recently Korean courts used to mechanically judge inventive step based on determination of substantial identicalness of purpose, construction and effect of the claimed invention and the prior art, and were silent on the specific standard for determination of inventive step.

However, recently on September 06, 2007 ([Supreme Court Ruling of 2005 HU 3284) for the first time Supreme Court suggested a specific standard for determining inventive step, which is different from the precedents. The Korean Supreme Court took a different approach in its interpretation of inventive step and ruled that inventive step should be denied when there is some suggestion or motivation to reach the claimed invention by combination or aggregation of the feature in the prior art or when the court can recognize that a person ordinary skilled in the art can easily come to the claimed invention by combination or aggregation of feature in the prior art in view of the level of technology, common general knowledge in the art, technical problem, progress trend of technology and needs in the pertinent technical field at the time of filing patent application.

In Korea, the manner in which an invention was made (flash of genius) generally cannot be used to deny inventive step. Many Court rulings have admitted inventive step when they recognized difficulty in construction of the invention. Therefore, assertion on presence of flash of creative genius in the invention would be supportive for inventive step.

In Korea, commercial success alone cannot be regarded as indicative of inventive step. However, commercial success can be supplementary evidence to strengthen the argument of inventive step when it coupled with other evidence for inventive step.

Through several rulings such as Supreme Court Ruling of 94 HU 1817 (Nov. 28, 1995) and Patent Court ruling of 2002 HEO 8424 (Sep. 4, 2003), Korean courts took into account the commercial success as affirmative evidence supporting inventive step of the invention when the applicant proved that his/her commercial success has been derived from the technical feature of the claimed invention, not from marketing skill or advertisement.

However, the Supreme Court clearly takes up the position that inventive step cannot be recognized only with commercial success itself (Supreme Court Ruling of 2004 HU 3546 (Nov. 10, 2005).

The Korean Patent Examination Guideline (KPTG) prohibit hindsight reasoning in determining inventive step of an invention and recently the Korean Supreme Court has also clearly declared that hindsight reasoning should be prohibited in judgment on inventive step [Supreme Court Ruling of 2006 HU 138 (Aug. 24, 2007)].

JAPAN

Apart from the universal general approach followed all over the world, in Japan there is also a specific approach for formulating reasoning that includes steps of:

Grasping the claimed invention and the cited invention (one or more cited inventions). In this case, the technical matter, which can be derived by taking the common technical knowledge into consideration, can be used for grasping the cited invention.

Selecting one cited invention (primary cited invention) which is most suitable for formulating and comparing the claimed invention with such cited invention and then clarifying the identicalness and the difference in technical elements.

Evaluating whether any reasoning for negating the inventive step of claimed invention can be formulated based on the content of the primary cited invention and other secondary cited invention(s) (including the well-known technique and conventional technique).

Factors Affecting Formulation of Reasoning

- It is evaluated whether or not the difference is mere selection of optimum materials in the cited invention, or mere design modification, or mere use of the well-known technique and conventional technique, and the like.
- It is evaluated whether or not there is any motivation which can be found in the cited invention for leading to the difference.

- It is evaluated whether or not the specification discloses any advantageous effect based on the difference as compared with the cited invention. The proof of any advantageous effect is very useful for asserting the inventive step.


Even if there is apparently a close relationship in the technical fields, common subject to be attained and common function/operation between the claimed invention and the cited invention, but if the cited references have a description which could negate the reasoning to combine these references, then the inventive step of the claimed invention may be positively evaluated.

 

 

 

INTERPRETATION OF OBVIOUSNESS IN COMMONWEALTH COUNTRIES

 

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.

European Patent Office

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.

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], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

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.

AUSTRALIA:

Section 18(1)(b) of the Patents Act 1990 (Cth) requires that an invention involve an 'inventive step', and Section 45(1)(c) requires inventive step to be considered during examination.

Section 7(2) provides that an invention is taken to involve an inventive step 'unless the invention would have been obvious to a person skilled in the relevant art' in the light of 'common general knowledge' in Australia and such other prior art information as may be added to that common general knowledge, as before the invention's priority date. There is thus only a limited prior art database available for an inventive step assessment - not every prior art document can be used.

For determination of the inventive step it is necessary to construct a hypothetical person skilled in that relevant art and obtain an appreciation of the common general knowledge of such a person. That hypothetical person's knowledge will then be used as a standard in evaluating whether the invention is obvious in the light of this knowledge or involves an inventive step.

The main question to be asked in a determination of inventive step has been distilled down to the following in Olin Mathieson v Biorex (1970) RPC157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Lid [2002] HCA 59 (12 December 2002):

"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result}.

In assessing whether an invention satisfies the requirements for the presence of an inventive step, the following (amongst others) are useful tools in assessing inventive step, but generally do not alone establish it:

(i) Long Felt Need

If the claim solves a "long felt need", there is a presumption that the claim is not obvious as other inventors must have also tried to solve the "long felt need" and not succeeded:

In Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at page 358 it was held:

" ... the question of obviousness is probably best tested, if this be possible, by the guidance given by contemporaneous events .... If an invention has resulted in the solution of a problem which has been troubling industry for years and achieves immediate success upon its introduction, then the suggestion after the event that the step was obvious inevitably rings a little hollow.

(ii) Copying of the Invention

Copying of the invention in preference to the prior art is indicative of an inventive step:

In Samuel Parkes & Co Ltd v Cocker Brothers Ld (1929) 46 RPC 241 at page 248 it was held by the Court that:

"When once it has been found ... that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is ... practically impossible to say that there is not present that scintilla of invention necessary to support the patent .... No evidence is more cogent of the success of the invention than that the defendants simply copied it and made profits by making and selling the products.

(iii) Complexity of the Work

If the work undertaken by the inventor in order to produce the invention was particularly complex, and not readily carried out, that is an indication that it was not a matter of routine. In such cases the invention would not be obvious.


In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [58] it was held that:

"The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.

Commercial success may also act as a factor which points to inventiveness, as stated in a recent important decision from the Australian High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21:

"Secondary evidence, such as commercial success... has a role to play in a case concerning inventive step... An Australian court should be slow to ignore secondary evidence or to rely on its own assumed technical expertise to reach conclusions contrary to such evidence. Australian courts have long recognised that the importance of such evidence and its weight will vary from case to case; it will not necessarily be determinative."

The dangers imposed by the hindsight analysis were first noticed by the Australian Courts in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (1980) CLR 253

"With the benefit of hindsight, it may be possible to say that each of the steps taken ... was logical, but that does not mean that the claimed inventive step was obvious”

This case was appealed and, Australian High Court in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 and the Aickin J. held that in relation to the process of recreating the prior art, the misuse of hindsight is most common. Once a novel idea, object, process or combination has been published it will often be possible to work backwards to identify the integers which comprise the claimed invention scattered among the prior documents held in libraries. Such a process was held by the High Court not to demonstrate a lack of inventiveness.

An approach used by the courts in HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437 to avoid this problem is the "problem-solution" approach.


"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem. "

The "problem-solution approach is based on the question of whether the claimed invention would have been obvious to the hypothetical skilled addressee when faced with a particular problem. The frame work of the "problem-solution" approach inherently embodies what happens in practice and is regarded by the Patent Office as covering the statutory framework. Given this, Australian Patent Examiners are instructed during examination to not take any inventive step objections without using the "problem-solution" approach and formulating a problem from the specification itself.

In general terms, it has been the dangers posed by hindsight analysis that have caused Australian courts to stress that there need only be a 'scintilla of invention' for a particular step not to be obvious, and that the simplicity of an idea does not prevent it from being inventive.

 

 

 

 

COMPULSORY LICENCE FOR PATENTS IN INDIA

Patents are granted to encourage the inventors to disclose their inventions and also to grant them monopolistic right to exploit the invention. The objective of Patent Grant in India is to ensure that the inventions are worked in India on a commercial scale and to the fullest extent without any undue delay.
Accordingly, any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent, may make an application to the Controller for grant of compulsory license on the grounds that:
(a) the reasonable requirements of the public with respect to the patented invention have not been satisfied; and
(b) the patented invention is not available to the public at a reasonable price.
(c) the invention is not worked commercially to fullest extent in territory of India.
The circumstances constituting "failure to meet the reasonable requirements'' of public in respect of a patent are as follows:
(i) Inadequate manufacture in India or failure to grant licenses on reasonable terms with in a period of 6 months from applying by the applicant resulting in:
(a) Prejudice to an existing trade or industry or its development,
(b) Prejudice to the establishment of a new trade or industry in India,
(c) Prejudice to the trade or industry of any person or class of persons,
(d) Demand for the patented article not being met adequately by local manufacture,
(e) Failure to develop an export market for the patented articles made in India,
(f) Prejudice to the establishment of commercial activities in India;
(ii) Prejudice to the establishment or development of trade or industry in India in goods not protected by the patent arising from restrictive conditions imposed by the patentee;
(iii) Non-working of the patent in India on a commercial scale;
(iv) Demand for the patented articles being met by importation from abroad; and
(v) Commercial working of the patented invention in India being hindered or prevented by import of the patented articles from abroad.
Grant of Compulsory license is for the remaining term of patent unless a shorter period looks reasonable and required in case to the Controller.
Further, it is to be noted that while granting the license the Controller shall take into account the nature of invention, time elapsed, ability of applicant, his efforts for obtaining a license on reasonable terms. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors.
Normally request for grant of Compulsory License is published and Patentee and other interested persons are afforded reasonable opportunity to defend the grant. But in case of national emergency and other urgent condition in public interest the Controller may first grant the License and then notify the Patentee and other interested persons.
Under special circumstances of medical emergency supported by notification by foreign country in this regard controller may grant compulsory license to meet the medical emergency in that country.

 

 

 

 

 

 

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Draft Design (Amendment) Rules 2007- India

Recently the Indian Government has proposed to amend the rules governing the Indian Design Act and in this regards has published Drat Design (Amendment) Rules, 2007 to seek opinion of general public. The major changes suggested by the draft amendments rules are as follows:

Under the New Draft Rules, the requirement of cardboard for filing design application has been done away with a strong A-4 size paper.

The requirement regarding size of design to be at least of 5 by 4 inches or 13 by 10 cms is replaced by “13 by 10 cms”.
   
Now the photographs have to be affixed only by strong glue paper not by cellotape or staple pin. Further one set of photographs (where photographs are used) should not be covered with cellophane or any other paper.

Most significant change is extension of time limit for putting in application in order, now the government proposes an extension of 3 months for putting the application in order for acceptance subject to payment of additional fee for extension of time.  This shall be a major relief for the Foreign Applicants as the time for communicating the objections and seeking instructions was very limited earlier and under the proposed amendment the time can be effectively utilised to put the application in order for acceptance.

Further under Rule 47, in case of exceptional circumstances the Controller has power to extend time limit by 3 months for doing any act or taking any proceeding where no special provision is made. Please note that this provision shall not be applicable in case of mandatory clauses like putting application in order for acceptance within 6 months or a further period of 3 months thereafter.

 

 

 

 

 

 

 

INTERPRETATION OF OBVIOUSNESS IN EUROPE

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.

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], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

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 DOCTRINE OF OBVIOUSNESS IN INDIA

 

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.

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.


Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar all over the world, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.   

 

 

 

 

 

 

 

NEW DRAFT MANUAL OF PATENT PRACTICE AND PROCEDURE
PATENT OFFICE, INDIA (2008)

Recently the Indian Patent Office has published a New Draft Manual Of Patent Practice And Procedure - Patent Office, India (2008) relating to the Patent Practice to be followed by the Indian Patent office. Beside retaining its old interpretation of obviousness (non-inventiveness) the Indian Patent office has tried to incorporate the interpretation used in all major Patent office around the world.

Further, as regards to independent claims, a restriction is imposed according to which the independent claims must show dependency to main claim. Therefore, in case of independent claims the Patent office shall require a divisional application.  

Now only one omnibus claim can be claimed per application. Further, in respect of patent applications relating to electronics etc. those claims together forming single inventive concept shall be allowed in one application only e.g. transmitter and receiver.

In case of chemical and pharmaceutical compounds, process, compound and one application form of compound can be claimed in a single application.

In software related inventions now method claims shall be allowed. Earlier the Patent office used to object of method claims only and used to allow only the device claims that too with hardware components.

The link to said Patent manual is as follows:

http://ipindia.nic.in/ipr/patent/DraftPatent_Manual_2008.pdf

Recently the Indian Patent Office published new draft manual relating to the Patent Practice to be followed by the Indian Patent office. This manual shall outline the practice followed by the Indian Patent office during the examination of all patent application filed in India whether the Indian application or application claiming conventional priority or filed under the PCT.
Beside retaining its old interpretation of obviousness (non-inventiveness) the Indian Patent office has tried to incorporate the interpretation used in all major Patent office around the world especially the European Patent office.
Further, as regards to independent claims, a restriction is imposed according to which the independent claims must show dependency to main claim. Therefore, now in case of independent claims the Applicant shall have to file a divisional application to protect the whole scope of the invention.  
Now only one omnibus claim can be claimed per application. As only one independent claim shall be allowed naturally one omnibus claim shall be allowed per application.
Further, in respect of patent applications relating to inventions in the field of electronics etc. those claims together forming single inventive concept shall be allowed in one application only e.g. transmitter and receiver. This is a positive step as few Examiners used to consider other set of claims as independent claims and the Applicant has to file divisional applications to protect other set of claims.
In case of chemical and pharmaceutical compounds, process, compound and one application form of compound can be claimed in a single application.
In software related inventions now method claims shall be allowed. Earlier the Patent office used to object of method claims and used to allow only the device claims that too with hardware components.

 

 

 

 

 

 

 

PATENTED DRUGS- NO MARKETING APPROVALS TO GENERIC COMPANIES

The Government of India is finalising a system that will prevent generic manufactures from getting marketing approval to sell patented drugs in India. As a result the generic companies may no longer get market approval for launching generic versions of drugs in respect of which a Patent Grant is in force in India. Drug Controller General of India will seek list of patented drugs from the pharma companies about the valid patents rights in India and shall prepare a data base of such patents, after which no marketing approval shall be given to their generic versions till such patent right is in force in India.
Such a move will avoid infringement and counter claim litigation in respect of pharma companies in Indian Courts and will require that generic manufactures file Post Grant/ revocation proceedings before the Patent Office etc. and only after their claim is declared successful, they can claim for marketing approval for generic versions.  Further, to delay grant of Patent rights the generic companies will file number of Pre grant oppositions so that no patent is granted or at least grant of Patent is delayed. This system will be ineffective where a marketing approval has already be granted by Indian Authority, in such a case the effective remedy will be to initiate infringement proceedings against the infringer. 
Now, the Pharma companies entering India have to be more careful as they can be assure that all possible measures shall be taken by the generic companies to delay their Patent Grant in India. Moreover, no pharma company would like that their Patent application is successfully opposed because of inefficient Attorneys that failed to plug the loop holes. In India, there are a number of IPR firms doing Patent works, which are not proficient with the legal interpretation of statue as they lack Attorneys with effective court experiences and fail to legally safeguard all interest of client. Most glaring example being the way the Pre grant opposition in respect of Novartis and LG Life Science were handled by the famous IPR firms in India.
Apart from above, the innovative pharma companies round the globe require that the time for filing and disposing pre grant opposition be reduced or at least fixed in India, so that the application can proceed towards grant at the earliest and this proposed system can be used efficiently by the companies.   

 

 

 

 

INTERPRETATION OF OBVIOUSNESS IN UNITED STATES OF AMERICA

"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.

Flash of genius

The Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen.


The flash of genius test was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).

 

GRAHAM FACTORS

The factors a court will look at when determining obviousness and non-obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

the scope and content of the prior art;
the level of ordinary skill in the art;
the differences between the claimed invention and the prior art; and
objective evidence of nonobviousness.

In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:

commercial success;
long-felt but unsolved needs; and
failure of others.


Teaching-suggestion-motivation (TSM) test:

In Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), it was held that there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.[2] The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.

In one case, Applicant attempted to patent peanut butter and jelly sandwiches with crimped edges instead of crusts. The invention was challenged in the court that ruled that crimping method, which was essentially known was an obvious means of protecting the contents of the sandwich. The patent was therefore rejected for failing the non-obviousness test.

The list of non exhaustive rationales that may be used to find an invention obvious are as follows:

Combining prior art elements according to known methods to yield predictable results;

Simple substitution of one known element for another to obtain predictable results;

Use of known technique to improve similar devices (methods or products) in the same way;

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

“Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

Known work in one field of endeavour 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 variations would have been predictable to one of the ordinary skill in the art;

Some teaching, suggestion or motivation in the prior art would have led one of the ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

PATENTIBILTY OF MICROORGANISMS IN INDIA

Inventions pertaining to Microorganisms and other Biological material were subjected to product patent in India unlike many developed countries. But with effect from 20.05.2003 India has started granted patents in respect of invention related to microorganisms though India was not obliged to introduce laws for patenting microorganisms per se before 31.12.2004. Microorganisms patenting per se being considered to be a product patent the period of protection was 5 years from the date of grant or 7 years from the date of filing of application for patent. Now grant of patents for microbiological inventions is for a period of 20 years from the date of filing.

 

The most vital and important distinction between the legal practices of the India and developed countries is that India (developing countries) do not allow patenting of microorganisms that already exist in nature as the same is considered to be a discovery as per the provisions of the section 3(d) and therefore not patentable. But genetically modified versions of the same microorganisms that result in enhancement of its known efficacies are patentable.

The grants of Patent in respect of Microorganisms depend upon the regulations concerning the requirements for the deposition of Microorganisms under the Budapest Treaty of which India has become a member and accessibility of that microorganism from the depositories. As per proviso (ii) to section 10(d) the Microorganism if not being described
fully and particularly and is not available to public the said Microorganism is to be deposited before the International Depositary Authority under the Budapest Treaty with 3 months of making application in India. All details, available characteristics of the Microorganisms and details of depositary institutions shall be mentioned in specification for correctly identifying the same. Further access to the same is required to be made available only after date of Application in India or date of priority. For the purpose of Microorganisms and other Biological materials Microbial Type Culture Collection and Gene Bank (MTCC) is an internationally recognised depository institution.

It is therefore advisable before proceeding to file a patent application in respect of Microorganisms and other biological material to ensure that the same is not hit by the provisions of the section 3(d) of the Indian Patent Act and the invention is not a mere discovery of what already exist in nature and in case of genetically modified variant of the Microorganism or other biological material the invention results in enhancing the efficacy of the already exiting strain of the Microorganism or other biological material.

Sudhir Kumar Aswal,

Registered Patent Attorney, India

E- Patents India (A division of Aswal Associates)

S-171, Mohan Garden, New Delhi- 110059, India

Email: epatentsindia@yahoo.co.in, epatents@aswal.com

Web: www.aswal.com

Ph. : (91)-9810374087