Pre and post TRIPS positions

During the pre-TRIPS regime examination in India was limited to the requirements of novelty and utility. In the post-TRIPS regime  industrial applicability ,  technical advancement and inventive step were added as new elements to be factored in determining whether there is an invention. In the past over a decade the Indian Courts and the erstwhile Intellectual Property Appellate Board (IPAB) have been adjudicating disputes related to patents touching obviousness in a more focussed and structured manner. One concern that remains is the manner of determining inventive step of an invention, particularly when an obviousness rejection is based on the combination of prior art.

The guidelines in the current Patent Manual (2019) on inventive step determination 

When dealing with the invention and comparing with the prior art, the invention as a whole ought to be considered. It is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claims taken separately are known or might be found to be obvious. If an invention lies merely in verifying the previous predictions, without substantially adding anything for technical advancement or economic significance in the art, the inventive step is lacking. For the purpose of establishing obviousness of the invention, citing a mosaic of prior arts is permissible. If the invention is predictable based on the available prior art, merely requiring workshop improvement by a person skilled in the art, the inventive step is lacking.

Adjudicating inventive step or lack of it

Three elements have been identified to be discussed for adjudicating inventive step or lack of it and mere finding that the invention lacks inventive step is not enough. According to Delhi High Court in AGRIBOARD INTERNATIONAL LLC VS  DEPUTY CONTROLLER OF PATENTS AND DESIGNS [C.A. (COMM.IPD-PAT) 4/2022]:

24. In the opinion of this Court, while rejecting an invention for lack of inventive step, the Controller has to consider three elements-

• the invention disclosed in the prior art,
• the invention disclosed in the application under consideration, and
• the manner in which subject invention would be obvious to a person skilled in the art. 

25. Without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would not be permissible, unless it is a case where the same is absolutely clear. ………….. 

26. Thus, the Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration.

Thus, the examiner is required to investigate by comparing the claimed invention with  prior art to   determine the technical advancement or economic significance being the primary investigations to be undertaken before objecting to an application on the plea of lack of inventive step.

How should multiple prior art be considered and joined to determine inventive step

Moreover, any claim passes the test of inventive steps if it discloses a technical advancement in comparison with the closest prior art and the features comprising inventive steps are not obvious to a person skilled in the art (Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659). If several prior art documents are to be read in combination, there must be some common thread linking the claim with the prior art documents obvious to a person skilled in the art. It must be shown that the skilled person when faced with the claim would turn to some other citation to supplement the claim. Otherwise, the combined reading of the prior art documents or mosaicing of the same is impermissible.

In Enercon (India) Limited v. Aloys Wobben (ORA/08/2009/PT/CH) Order No.123 of 2013, it has been held as follows: 

“43. The mere existence in the prior arts, of each of the elements in the invention, will not ipso facto mean obviousness. For after all most inventions are built with prior known puzzle-pieces. There must be a coherent thread leading from the prior arts to the invention, the tracing of the thread must be an act which follows obviously. We must apply this reasoning to test if indeed it is obvious, or if it seems to us to be obvious to the person skilled in the art because of what we know now. If it is the latter, it is hindsight deduction and is not acceptable, but if it is the former, then the patent must go.”

Reasons are the links between the facts and the conclusion. Reasons indicate the basis on which a conclusion is arrived at on a given set of facts.  [ Calcutta High Court: AID NO. 20 OF 2022 GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD. VS THE CONTROLLER OF PATENTS AND DESIGNS].

Further, when adjudicating obviousness, the selection of the prior art/lead compound in prior art to be based on its useful properties and not structural similarities alone  and not hindsight driven search for structural similarities. There should not be any teachings away of the impugned invention in prior art.  [Delhi High Court :BRISTOL-MYERS SQUIBB HOLDINGS IRELAND UNLIMITED VS BDR PHARMACEUTICALS INTERNATIONAL PVT. LTD. & ANR. : CS(COMM) 27/2020]

Obviousness of technical advancement is to be assessed by a person skilled in the art. This person is not defined by the Patents Act. It has been defined by the Courts to be hypothetical person having greater than average skill to do the job well and may be a single or group of persons but not of inventive capability. [Madras High Court : RHODIA OPERATIONS VS ASST CONTROLLER OF PATENTS, TRADEMARKS AND DESIGNS, (T) CMA (PT) NO.88 OF 2023 (OA/14/2017/PT/CHN)]

Thus, to determine obviousness the invention as a whole needs to be considered against a prior art or combination of prior part joined with coherent thread, and technical advancement or economic significance or both to be sought.  Whether the same is obvious to a person skilled in the art, as defined by the Courts, is then assessed. The assessment is to be carried out without hindsight bias and with no teaching away.