Overcoming the Inventiveness Barrier to Patentability
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Introduction to inventiveness in patents
In the realm of intellectual property, inventiveness serves as the linchpin of patent law. It is one of the fundamental requirements in determining the patentability of an invention alongside novelty and industrial applicability. While the novelty requirement evaluates new aspects of the invention, the inventiveness requirement evaluates the obviousness of the invention given public knowledge at the time.
It is relatively easy for an invention to overcome the novelty requirement as compared to the inventiveness requirement – the latter is far more subjective. Recognising this, several countries encourage small-time inventors by granting utility model patents for a shorter term based on novelty criteria alone. These are loosely referred to as small/tiny/petty patents, and countries such as China, Australia and Malaysia are known for granting these patents.
Raising the bar high, the inventiveness requirement ensures that patents are granted only for inventions that represent a significant leap forward in their respective fields. This is essential to promote genuine innovation and prevent the proliferation of patents for trivial improvements. In general, this requirement is termed an ‘inventive step’ in some jurisdictions and ‘non-obviousness’ in others. While the need for an invention to exhibit an inventive step is common in patent laws worldwide, the specific methods used to assess and apply this requirement differ from one jurisdiction to another.
Understanding inventiveness under Indian patent law
In India, the Patents Act 1970 (the Act), which is aligned with World Intellectual Property Organization laws, governs the patent system. To secure a patent in India, an invention must fulfil a set of requirements, and the inventive step is a difficult requirements to overcome.
The concept of inventive step has evolved significantly over the years. The Act initially distinguished between ‘product’ and ‘process’ patents. This distinction was blurred by a 2005 amendment, which made the inventive step a requirement applicable to all types of patents uniformly. The Act defines an inventive step as ‘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 interpretation of ‘inventiveness’ has evolved in India through judicial decisions. The Supreme Court's landmark judgment (AIR 1982 SC 1444, Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries) emphasised that:
for an invention 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 inventive step.
Further, several Indian courts have time and again reiterated that a patent examiner must consider three critical elements before rejecting a patent application for the lack of inventive step:
- the prior art's disclosure of inventions;
- the invention disclosed in the application under review; and
- the manner in which the subject invention would be perceived as obvious by a person skilled in the relevant field.
An invention in India is considered inventive when it offers a technical advancement or economic significance, or both. Moreover, it should not be obvious to a person skilled in the relevant field. In essence, the Act requires an invention to be non-obvious and offer some form of technological or economic benefit to society.
The Indian patent office's approach to inventiveness
It is common practice in the Patent Office to combine multiple prior art documents and raise an objection under the inventive step requirement. Patent examiners are largely of the view that if all the documents are published before the date of the invention, then combining them would render the invention obvious to a person skilled in the art; hence, there is no technical advancement over the combination of prior art documents.
The burden is on an applicant to demonstrate how the invention is inventive in view of the combination of prior arts. The scope of such a demonstration is largely limited to the information provided in the patent specification at the time of filing. This signifies the importance of patent specification drafting and incorporating certain details in the patent specification beyond the mere working of the invention. These details would be of great help in overcoming the inventive step requirement during patent prosecution and in subsequent phases.
To provide stakeholders with a clear understanding of how the inventive step is evaluated, the Patent Office has provided an illustrative example of invention assessment in its pharmaceutical guidelines. The example lays down a four-step analysis for determining the inventive step of an invention, which is based on a House of Lords judgement (Windsurfing International Inc v Tabur Marine Ltd  RPC 59):
- Step 1: identifying the inventive concept embodied in the patent application.
- Step 2: imputing to a person of ordinary skill with ordinary creativity what was common general knowledge in the art at the priority date. This step involves defining the skilled person and the common general knowledge of the skilled person, which is essential for assessing the inventive step.
- Step 3: identifying the differences between the cited prior art and the alleged invention covered in the patent application.
- Step 4: deciding whether those differences constituted steps that would have been obvious to the skilled person or required any degree of invention. This step is the final assessment, determining whether the changes between the prior art and the invention were obvious or involved a degree of inventive thinking.
Strategies to overcome inventiveness hurdles
In India, for an invention to be considered inventive, apart from absolute novelty, the following two criteria must be fulfilled:
- the invention must be technically advanced as compared to prior art; and
- the invention should not be obvious to a person skilled in the art.
Although terms such as ‘technically advanced’, ‘person skilled in the art’ and ‘economic significance’ are not clearly defined in the Act, the guidelines from the Indian Patent Office, court judgements and patent office decisions help in interpreting these words. The lack of a clear definition naturally makes it the biggest hurdle when it comes to overcoming the inventiveness requirement. The following strategies can be considered at various stages based on the type of invention and the field of invention to overcome such hurdles.
Conducting thorough prior art searches
Conducting a thorough prior art search should be the first step for understanding the prior art in the field of the invention. Prior art refers to all the publicly available information, such as patents, scientific publications and products, that pertains to the invention's subject matter. To prove the inventive step, an inventor must demonstrate that their invention is not an obvious extension of existing knowledge.
Inventors and their patent attorneys must explore a wide range of databases, journals and resources to identify relevant prior art. Collaborating with experienced patent search professionals can enhance the quality of the search and uncover relevant documents. This would help the patent attorneys prepare for possible objections from the Patent Office.
Further, the Indian Patent Office is receptive to the interpretation of prior art documents by patent offices in other jurisdictions. If a patent is granted in a foreign jurisdiction for the same prior arts cited by the Indian Patent Office, the chances of overcoming the inventive step objections are generally high in India.
Additionally, the Hon’ble Delhi High Court has set a precedent (Avery Dennison Corporation v Controller of Patents and Designs, (2023) 93 PTC 26) emphasising that the time gap between prior art documents and the invention under examination should be considered when assessing the inventive step. This factor should be taken into account during the analysis of the inventive step. Consequently, it can be leveraged as a persuasive argument against the patent examiners to demonstrate that the prior art is, in fact, teaching away from the proposed invention.
Document the technical advance
The scope of an invention in India is largely limited to the information disclosed in the patent application. A well-drafted patent application is essential to overcome inventiveness hurdles. The patent application should include a detailed description of the invention, claims that clearly define the scope of protection and evidence to substantiate the inventive step. The application should provide a comprehensive overview of the invention, highlighting its technical advancement over the prior arts in the patent specification. It should emphasise how the invention is an improvement over existing knowledge or technology. Providing detailed explanations, diagrams, experimental results and real-world examples can help substantiate the claim of inventiveness.
Inventors should work closely with their patent attorneys to create a comprehensive and detailed description of the technical advancement. The description should highlight the specific technical problems that the invention addresses and how it overcomes these challenges. This level of detail can make it easier for patent examiners to recognise the inventive step.
A comparative analysis can be a powerful tool in demonstrating inventiveness. Inventors can compare their invention to existing solutions or technologies, highlighting the differences and advantages their invention offers. Incorporating a comparative analysis in a patent application can help illustrate the inventiveness of the invention. This analysis should address specific features or elements of the invention that distinguish it from the prior art and explain why these distinctions are not obvious. Including visual aids, such as tables and diagrams, can make the comparative analysis more compelling.
Economic significance is an important factor that contributes towards the inventive step requirement in India. Emphasising the economic significance of the invention can strengthen the case for inventiveness. If the invention has the potential to solve a critical problem at a lower cost, results in an inexpensive product or process of public importance, helps a significant invention reach the public at large faster or results in a commercially successful product or process, all these aspects can contribute to economic significance. Further, real-world applications of the invention and case studies can provide concrete evidence of economic significance. The patent application should clearly articulate the potential economic benefits of their invention, including examples of industries or sectors that could benefit from the innovation. Such a demonstration of the invention's economic significance can further strengthen the inventiveness of the invention.
Technical affidavits and declarations
During the prosecution stage, Indian patent examiners allow an applicant to provide additional information through technical affidavits in support of their invention to overcome the inventiveness requirement. Although it is not a norm in all cases, where possible the applicant should request the patent examiner and supplement the technical affidavit to overcome the inventive step objection. Incorporating technical affidavits from experts can be valuable in patent applications. Statements from professionals in the relevant field can support the claim that the invention is not obvious to a person skilled in the art. These professionals can provide a written declaration or testify in support of the patent application during the examination process. Their expertise and credibility can bolster the case for inventiveness.
The requirement of inventiveness is a critical element of the Indian patent system, serving as a safeguard against the grant of patents for obvious and trivial improvements. While overcoming the hurdles of inventiveness can be challenging, it is not insurmountable. By conducting thorough prior art searches, documenting technical advances, providing comparative analysis and highlighting economic significance, inventors can strengthen their patent applications and increase their chances of securing patents in India.
Navigating the complexities of Indian patent law requires a deep understanding of the inventive step requirement and the ability to present a convincing case to the Patent Office. Therefore, inventors are encouraged to seek the guidance of experienced patent professionals who can help them overcome the hurdles of inventiveness and protect their intellectual property in India's dynamic and fast-growing economy. With careful planning, expert guidance and a thorough approach, inventors can successfully navigate the challenges of inventiveness and secure valuable patents in India.