Divyendu Verma
Head of Global Patents
A patentable invention needs to have novelty, non-obviousness (inventive step) as well as industrially applicability for getting a valid patent protection in India or for that matter across the world as these requirements are more or less similar in all different jurisdictions, and therefore, the parameters for determining inventive step/non-obviousness slightly differs country wise. It is important to note that the Patent Laws in some countries use the term “Inventive step” while some other jurisdiction use “non-obviousness”. Accordingly, the term “Inventive step” and “non-obviousness” has been used interchangeably in the present article. Here in this article, the author has assumed that the invention is able to demonstrate the novelty. The focus of the article is, therefore, on the aspect of non-obviousness requirements and how these requirements have been interpreted differently by the different courts of law.
In order to understand about the obviousness, it is important to know that the word obvious has originated from the Latin word “obvius”: ob- (“before”) + via (“way”) meaning “being in the way”[1]. In Patent law, obviousness is tested using pre-defined rules that have been laid down by various courts of law in different patent jurisdictions. For example, the examination of inventive step (non-obviousness) in India has been largely developed on judicial expositions. The Indian Patents Act, 1970 has defined inventive step in section 2(1)(ja) 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.[2]”
The Delhi High Court in F. Hoffmann La Roche vs Cipla Ltd[3] after referring to Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd[4] and other notable foreign rulings, the Court laid down the five-step test for inventive step inquiry, where the following inquiries are to be conducted:
Step No.1 – To identify an ordinary person skilled in the art,
Step No.2- To identify the inventive concept embodied in the patent,
Step No.3 – To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date.
Step No.4 – To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical, and practical applications,
Step No.5 – To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindsight approach.
In arriving at the five-step test, the Delhi High Court further stated that – “whether an invention involves novelty and inventive step or is obvious is a mixed question of law and fact, and must depend on fact and circumstances of each case, and that though no absolute or uniform formula can be laid down to ascertain obviousness……….”.
Furthermore, during the enquiry of the inventive step, the role of the skilled person become important. The Delhi High Court, therefore, identified the skilled person as – “a person who practices in the field of endeavour, belongs to the same industry as the invention, possesses average knowledge and ability and is aware of what was common general knowledge at the relevant date”.
In another landmark case, the Supreme Court of India in Bishwanath Prasad Radhey Shyam supra, addressed the Inventive Step enquiry in combination and improvements patent applications. The Supreme Court held that in order for claimed invention to constitute an inventive step, the claimed invention should be more than a mere workshop improvement. Specifically, in the case of combination patents, the Supreme Court held that the claimed invention must be new or result in an article substantially cheaper or better than what existed before. Further, in case of an improvement patent, the improvement must itself constitute an inventive step.
In the United States, on the other hand, the combination patents are well defined in Black’s Law Dictionary as “patent granted for an invention that unites existing components in a novel way”[5]). Further, the combination patents are examined based on the well-defined test in KSR International Co. v. Teleflex Inc.[6] by the United States Supreme Court (SC). The SC held that the inventors who apply for combination patents must satisfy a two-pronged test for non-obviousness to obtain a valid combination patent. The first prong test in fact merges two earlier tests by the SC – firstly, the original “Synergy Test”, where the grant of a combination patent is rejected by the United States Patent & Trademark Office (USPTO) if a patent examiner determines that the claimed invention is obvious to a person of ordinary skill in the art. Secondly, the Graham factors as laid down in Graham et al. vs. John Deer Co.[7], where the patent examiner objectively compare the claimed differences between the claimed invention and the closest prior art while keeping in mind the level of ordinary skill in the art. Further, the second prong test is a ”Teaching, Suggestion, or Motivation” (TSM) test developed by the SC as a standard methodology to provide an insight and understanding of pending claims. Under the TSM test, a patent claim is obvious when “some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art”[8]. The TSM test is suitable to “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”[9]. In KSR International Co. v. Teleflex Inc.[10], the SC unanimously rejected the CAFC’s rigid application of the TSM test for obviousness, and reaffirmed the historical pedigree and current applicability of its broader approach to obviousness.
“Teaching away” is another but important concept to analyse obviousness under the US Patent law. This concept is based on the issue of motivation to combine different elements in a manner set out by a patent claim, and such motivation is important to the analysis of obviousness. Let us examine a recent decision by CAFC in Chemours Company FC, LLC v. Daikin Industries, Ltd[11] where the CAFC makes the analysis much easier to find out about the prior art references teaches away from the claimed invention. In this case, the CAFC overturned the PTAB’s obviousness decision and decided that PTAB failed to sufficiently describe why a skilled person would modify a prior art reference when doing so involved modifying its inventive concept.
However, the history of “Teaching away” doctrine is full of surprizes. For example, the CAFC in In re Gurley[12] opined that “a reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant”. In another case of In re Fulton[13], the CAFC evaluated whether a prior art that disclosed possible substitutes to the claimed features could be considered as “teaching away” from the claimed combination. The CAFC decided in negative and held that “because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the subject application, it does not teach away from the purported combination”. (emphasis added)
Let us also look at the European Union jurisdiction where the requirement of obviousness is more or less similar to the United States. According to European Patent Law, an invention shall be considered involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.
Further, the European Union utilizes the “could-would” test, where instead of only determining if a person skilled in the relevant field could perform the invention, it is determined whether the person would arrive at the claimed invention given the relevant teaching and technology at the time of the invention. In other words, “could” refers to the theoretical possibility of finding the solution while “would” denotes whether the skilled person would have practically found the solution in view of the context in which the solution is presented.
In almost all practical scenario, “problem-solution approach” has been used by the EPO to determine the inventive-step of the claimed invention as the “problem-solution approach” is the bench mark of EPO examination guidelines. However, the EPO board decision in case T 465/92[14] attracted lots of attention because the Board stated in the decision that the problem and solution approach is no more than one possible route for the assessment of inventiveness. Specifically, the Board decided to avoid the problem and solution approach because it considered that the all seven relevant cited prior arts were all equally close to the claimed invention and therefore, the opponent “ought not to be tied down by having to select one or more citations as being closer than others”[15]. Consequently, the Board considered them all individually without selecting one as the closest prior art document. Further, the EPO board decision in T 465/92 also notes that there may be situations which “can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an invention breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art”[16].
Taking a clue from the above case T 465/92, the applicant in case T 188/09[17] has approach EPO Board of appeal against the refusal of a patent application by the Examining Division of EPO. The Applicant has argued that the “problem-solution approach” should not be used in the present case. Although the “problem-solution approach” was used by the Examining Division of EPO as a tool to provide a consistent test to assess the inventive step of a claimed invention, there were cases like T 465/92, where the EPO board has decided that its application was not appropriate because it hindered rather than assisted in answering the ultimate question of whether or not the claimed invention was obvious over the cited prior art references. Accordingly, in this case T 188/09, the board opined that the “problem and solution approach” is regularly applied as an auxiliary means by the EPO in the course of deciding whether or not claimed invention fulfils the requirements of inventive step as provided in Article 56 of EPC.
As a closing remarks to the present article, the author would like conclude by stating that more or less the interpretation of obviousness or lack of inventive step is broadly similar all over the world, the only difference is in approaches and/or methods which were laid down by the various courts while interpreting the law of the respective countries.
[1] http://triggs.djvu.org/century-dictionary.com/cent2jpgframes.php?volno=05&page=4070
[2] https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps2.html
[3] F. Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central,. CS (OS) No.89/2008 and C.C. 52/2008, Decided on 7 September, 2012;
[4] Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444);
[5] See BLACK’S LAW DICTIONARY 1157 (8th ed. 2004) (defining a combination patent as a “patent granted for an invention that unites existing components in a novel way”).
[6] KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007)
[7] Graham et al. vs. John Deer Co., 383 US 1, 1966
[8] Teleflex, 127 S. Ct. at 1734 (quoting Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1323-24 (CAFC 1999)).
[9] Teleflex, 127 S. Ct. at 1741
[10] KSR International Co. v. Teleflex Inc., 127 S. Ct. 1739-41 (2007)
[11] Chemours Company FC, LLC v. Daikin Industries, Ltd., No. 20-1289, Slip Op. (CAFC Jul. 22, 2021).
[12] In re Gurley, 27 F.3d 551 (CAFC 1994)
[13] In re Fulton, 391 F.3d 1195 (CAFC 2004)
[14] Case number: T 0465/92; Date of decision: 14 October 1994
[15] Refer to points 9.3 and 9.4 of decision in case T 465/92.
[16] Refer to point 9.5 of decision in case T 465/92
[17] Case number: T 188/09; Date of decision: 21 July 2011