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Sunday, 16 March 2014

"Inventive step" in India: getting a better understanding

Alternately fascinating and frustrating those who seek to work within its parameters, the Indian Patents Act 1970 is increasingly coming under scrutiny by patent owners and by their competitors, as well as by investors.  Is it fit for purpose in a post-TRIPS era and, if so, for whose purpose?  In this guest post by fellow blogger Sai Deepak ("The Demanding Mistress", here), the author takes a closer look at how the Indian statute law treats one of patent law's most fundamental concepts, "inventive step". He writes:
The definition of “inventive step” under the Patents Act 1970 is usually equated to “a non-obvious technical advancement” which, though this appears correct, may not convey the definition’s complete scope and import. Inventive step under the Act is defined in Section 2(ja) as follows:
“inventive step” means 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
A question that could be asked is, wouldn’t reducing the scope of the definition to “a non-obvious technical advancement”, amount to a flawed abridgment? If inventive step were to only mean a “non-obvious technical advancement”, it renders nugatory the use of “or having economic significance or both” in the definition. Perhaps, a simpler way of understanding the definition is to expand it as follows:
1. Inventive step means a feature of an invention that involves technical advancement over the prior art and that (reference here is to the feature, not "technical advance") makes the invention not obvious to a person skilled in the art

2. Inventive step means a feature of an invention having economic significance and that (reference here again is to the feature, not "technical advance") makes the invention not obvious to a person skilled in the art

3. Inventive step means a feature of an invention having technical advancement and economic significance and that (reference here too is to the feature, not "technical advance") makes the invention not obvious to a person skilled in the art.
In other words, inventive step refers to that feature of the invention which satisfies the following twin criteria:
1. The feature involve a technical advance or must have economic significance or both; and

2. The feature must be non-obvious to a person skilled in the art.
Accordingly, inventive step does not refer solely to a “non-obvious technical advancement”, but in fact refers to a “non-obvious feature” which involves either a technical advance or has economic significance or both.

The corollary is that the definition distinguishes “technical advancement” from the requirement of non-obviousness. Simply put, under the definition, a technical advance by itself is not non-obvious since, if that were to be the case, a “non-obvious technical advance” would be a pleonasm.

Since one of the principles of statutory interpretation is that no word or term or phrase used in a statutory provision must be rendered redundant/repetitive, it follows that a “technical advance” merely refers to a feature which is technical in nature, the qualitative contribution of which is to be further assessed by the requirement of “that makes the invention not obvious to a person skilled in the art”.

Another important consequence is that the presence of technical advance is not the sole criterion to judge if an invention has an inventive step. Economic significance of a non-obvious feature too could help the product or the process satisfy the “inventive step” requirement. Therefore, in the absence of a technical advancement, a patent may be granted over a non-obvious feature owing to its economic significance.

This interpretation finds tacit support in the Indian Supreme Court’s Novartis decision [on which see, among other items, Wikipedia here, IPKat here and Spicy IP here]. Extracted below is para 90 of the decision:
“90. On a combined reading of causes (j), (ac) and (ja) of section 2(1), in order to qualify as “invention”, a product must, therefore, satisfy the following tests:

(i) It must be “new”;

(ii) It must be “capable of being made or used in an industry”

(iii) It must come into being as a result of an invention which has a feature that:

(a) entails technical advance over existing knowledge; or

(b)has an economic significance


(c) makes the invention not obvious to a person skilled in the art.”
Although the Supreme Court has not expressly endorsed the interpretation suggested in this post, its representation of the definition of inventive step appears implicitly to support it. One hopes this interpretation is of use to patent applicants before the Indian Patent Office in instances where inventive step is sought to be established on the basis of the economic significance of a non-obvious feature of a product or a process. In particular, this interpretation may come handy when a patent is sought over a process which results in significant cost savings.
The IPKat thanks Sai for taking the trouble to explain this.

Merpel notes that "inventive step" is a remarkably flexible concept and that, in jurisdictions in which precedent is taken seriously, seems to be not so much a precisely-defined concept that can be applied consistently to any set of facts, but rather an accolade awarded to patents that the courts consider worthy of being valid. Accordingly there always seem to be two lines of acceptable and authoritative precedent -- one that enables a finding of "inventive step" to be made, while the other enables it to be denied.


Roufousse T. Fairfly said...

2. Inventive step means a feature of an invention having economic significance

Is there a confusion in the requirements for an invention between inventive step and something else? The expression "economic significance" sounds to me to be related to the concept called "industrial application" in Europe (Art. 57 EPC), or "utility" elsewhere.

One of the EPO Case Law book sections relating to Art. 57 begins with the heading "1.2. Indication of a profitable use of the invention in industry". A "profitable use" would be "economically significant", isn't it?

If "Economic significance" was to be considered related to "commercial success", then this wouldn't help the applicant's case before the EPO w.r.t. inventive step, at least not directly.

From the Guidelines G-VII-10.3:

Commercial success alone is not to be regarded as indicative of
inventive step, but evidence of immediate commercial success when
coupled with evidence of a long-felt want is of relevance provided the
examiner is satisfied that the success derives from the technical
features of the invention and not from other influences (e.g. selling
techniques or advertising).

Anonymous said...

There is an easier view that one can take without contortions.

Instead of some hybrid "and" (which appears to be an attempt to maintain in any end view the requirement of "technical," why not use the simple "or" reading. This would comport with the expansion beyond mere technical and expand closer to the U.S. view of Useful Arts (which includes business methods, including non-technical business methods).

J.Sai Deepak said...

@Roufousse: Thanks for the comment. Under the Indian Act, I dont think "economic significance" in the definition of "inventive step" is a reference to "industrial application" because the latter is specifically defined in Section 2(1)(ac) as follows:

"(ac) "capable of industrial application", in relation to an invention, means that the
invention is capable of being made or used in an industry"

Further, the wording of the definition of "inventive step" seems to suggest that "economic significance" of a feature is treated as a permissible substitute to "technical advancement" of the feature.

Also, I dont think "commercial success" is the same as "economic significance" since commercial success is a secondary parameter to judge the reception of a feature in the market, whereas economic significance probably refers to cost reduction or cost-effectiveness of a feature.

Among the three options you present, although I havent looked into the literature on the meaning of "profitable use", I think "profitable use" comes closest to "economic significance".


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