Inventive Step:
Section 2(1)(ja) of the Indian Patent Act defines “inventive step‟ as:
(ja) “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.
The concept of “inventive step” is often misunderstood due to the assumption that there exists a worldwide uniform definition thereof. As per the above-cited Section 2(1)(ja) of the Act, inventive step entails a feature of an invention involving technical advancement or economic significance, or both, making it not obvious to a person skilled in the art. Interpreting this, inventive step is not confined to a mere “non-obvious technical advance” as implied by a closer analysis of the definition.
In the words of Justice Ravindra Bhatt in Asian Electronics Ltd vs Havells India Limited, an “invention” to be patentable, therefore, should:
a) involve an inventive step capable of industrial application;
b) which should involve technical advance as compared to the existing knowledge, or having economic significance or both; and
c) be not obvious to a person skilled in the art.
In essence, inventive step concept in India pertains to an inventive feature meeting two criteria: The feature embodies technical progress or holds economic importance, or a combination of both and the feature is not obvious to a person skilled in the art. This underscores that the presence of technical advancement alone doesn’t suffice for non-obviousness.
Further, economic significance also contributes to satisfying the inventive step requirement, applicable to both products and processes. This legal clarity, following established principles, aids in developing an informed jurisprudence and policy formation, promoting a comprehensive understanding of the law.
Crucial Decisions:
In Impact Selector International LLC Vs Controller of Patents , the Delhi High Court categorically observed:
“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. Without such an analysis, the rejection of the patent application under Section 2(1) (ja) of the Act would be contrary to the provision itself. The remaining prior arts which are cited by ld. Counsel having not been considered in the impugned order, the Court does not wish to render any opinion in this regard.”
The Court, therefore, made it clear that Controller must assess the existing knowledge and how a skilled person in the field would progress from that knowledge to the invention described in the application. Failing to conduct this analysis would contradict the provision of rejecting patent applications under Section 2(1)(ja) of the Act.
In Agriboard International LLC v Deputy Controller of Patents and Designs, the Delhi High Court invalidated a rejection decision issued by the IPO. The court established that dismissing an application on grounds of inventiveness with insufficient analysis contradicts the principles of natural justice.
Similarly, in the matter of Otsuka Pharmaceutical v Controller of Patents, the Delhi High Court reproached the IPO for justifying the denial of a patent by referencing prior art documents that were not presented during the oral hearing process. Citing a notification by the Controller General of patents, the court emphasized that any objections related to prior art must be communicated to the applicant before the hearing date.
It is crucial to highlight that in the case of Perkinelmer Health Sciences Inc and Ors v Controller of Patents, the Court made reference to the aforementioned Otsuka ruling while remanding the patent matter back to the IPO. The court permitted the appeal on the basis of raising of a novel objection by the Controller under Section 3(f) during the hearing, without prior notice to the applicant. Additionally, the refusal order cited Section 3(f) of the Patents Act as one of the grounds for denial.
Remand, Additional Citations, Mix ups:
Dow Agrosciences LLC Vs The Controller of Patents (August 2023)
(a) Fact:
M/s Dow Agrosciences LLC challenged the Indian Patent Office (IPO) order dated 14th July, 2020 that refused the grant of a patent for their application titled ‘Stabilized Agricultural Oil Dispersions’. The refusal, as per Section 15 of the Patents Act, 1970, was based on various grounds, including a lack of inventive step supported by several prior art documents. The subject patent application was filed in the Patent Office on 25th October, 2012, and its publication under Section 11A of the Act took place on 19th February, 2016.
(b) FER & Hearing:
The first examination report (FER) dated 29th December, 2017, raised objections about lack of inventive step under Section 2(1)(ja) of the Patent Act, referencing three prior art documents, D1 (WO2002036566 A1), D2 (US5599768), and D3 (WO2008032328 A2) along with objections regarding non-patentability under Section 3(e) of the Act and lack of clarity objection under Section 10(4)(c) and Section 10(5) of the Act. The Appellant addressed these issues in their response to the FER on 26th June, 2018.
Subsequently, a hearing notice dated 18th November, 2019 was issued, which referred to documents, D1 to D3 along with an additional set of 19 prior art documents (D4 to D22) for lack of inventive step objection. The hearing notice also maintained objection regarding non-patentability under Section 3(e) of the Act and insufficiency of disclosure. After the hearing, the subject patent application was ultimately refused by the impugned order.
(c) Arguments:
The appellant’s counsel argued three main points of contention:
i) Errors in reference to certain prior art documents (D16 and D7).
ii) Document D7 (EP0789999) was referenced inaccurately in the impugned order.
iii) The rejection on the interpretation of the term ‘consisting essentially’ was not raised previously.
The counsel for the Patent Office acknowledged the inaccuracies in the impugned order and suggested that a remand to the IPO for fresh consideration may be necessary. The Court agrees, noting that the impugned order contains substantial errors in references and therefore cannot be upheld.
(d) Decision and Observation(s):
Considering the mistakes in referencing, the Court found it appropriate to remand the matter to the Patent Office for a new hearing. The fresh hearing to take place based on the existing hearing notice. In case, any additional objections are to be raised, the same shall also be enumerated and submissions shall be sought from the Applicant. The decision must be rendered within two months of the Appellant’s submission of written arguments. The Court also ordered that the updated Form 3 must be filed within stipulated time.
The Court also observed that Patent Office shall ensure that such errors do not occur, as rejection of a patent deprives the Applicant for valuable economic rights.
In Guangdong Oppo Mobile Vs The Controller Of Patents And Others (June 2023), the Court held that while passing the impugned order, there has been a violation of the statutory provisions in issuing the hearing notice citing additional objections and relying on the same in without granting an opportunity to the appellant to amend its claim and without issuance of a Second Examination Report. The matter was remanded back to the Controller for reconsideration. In conclusion, the court found the rejection order unsustainable and ordered a fresh reconsideration of the patent application.
Crux of the matter:
The crux of the matter is that inventive step, within Indian context, ought to be considered distinctively along the lines of Indian jurisprudence including as elucidated in case laws such as Asian Electronics Ltd, Impact Selector, Agriboard, Otsuka (as recited hereinabove) – there is no universal/worldwide uniform definition thereof. Errors can happen at IPOs end, attorneys end as well as the applicants end – as long as there is intention to rectify it within the purview of the law, that endeavour ought to be made suo motu so that, in each instance, the need to knock at the doors of appellate court does not arise. Also, reasoned decision is the soul of any judicial/quasi-judicial pronouncement and that cannot be compromised. In all circumstances, basic principles of objectivity, audi alteram partem, fairness and intention to solve problem/issues should prevail lest litigations (even on petty matters) may not stop anytime soon.
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