Recent Development On The Assessment Of Inventive Step In India

Novelty and inventive step are the foundational requirements for the grant of a patent application around the world. While novelty is a straight-forward technical analysis of whether the invention is disclosed by a single prior art or not, determining the inventive step of an invention is a relatively trickier task. This is mainly because what seems obvious to one may not be obvious to another person. This sort of subjectivity brings a lot of inconsistency in this analysis, which could eventually lead to a wide array of decisions on the grant of patent applications. Therefore, to eliminate this subjectiveness and bring more objectivity to this analysis, quite a few guidelines and case laws have been identified for defining the process to be followed for judging the inventive step of an invention.

For instance, there are multiple case laws across the jurisdictions which have established the relevance of various factors that are critical for the inventive step analysis. For example, the number of documents cited to question the inventive step of an invention, the skill set of a person skilled in the art for judging the inventive step, and impermissibility of the hindsight are few of the most relevant criteria to be taken into consideration for this analysis.

Even then, it happens quite often that an application that is granted in many jurisdictions is refused in a jurisdiction on the ground of lack of inventive step. While this clearly indicates the inconsistency in practise, such instances also impact the confidence of the applicant in that jurisdiction. Therefore, any judgement from the Courts, which further clarifies the inventive step analysis, is always received with a lot of enthusiasm.

One such recent decision of the Hon’ble High Court of Delhi in Avery Dennison Corporation vs Controller of Patents and Designs has garnered quite some attention. In this case, the Appellant sought to set aside the Respondent’s decision of refusing the application for grant of a patent titled ‘Notched Fastener’, bearing application no. 5160/DELNP/2013 dated June 10th, 2013, on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act.

In the refusal order, the Respondent had relied on two prior art documents, D2 and D3, and D2 had been considered as the most relevant prior art document, which dealt with an apparatus for dispensing individual fasteners. Interestingly, D2 is also filed by the same Applicant as that of the patent application in question.

Before the Court, the Appellant argued that the inventive step in the subject patent lies in the following features – creation of the notch, position of the notch, shape of the notch, and the direction of the notch in relation to cross-pieces. Further, the technical advantage has been identified to lie in overcoming the variation in the length of the fastener being cut due to elasticity. This feature is achieved by using notches in the manner, shape, and orientation described in the patent application. The Respondent, on the other hand, while alleging the subject application to not involve inventive step, argued that the creation, purpose, and effect of the notch in the subject patent can be construed by a reading of D2. A mere change in the shape or position of the notch in the subject patent would be obvious to a person skilled in the art. The shape of the notch itself cannot constitute an inventive step and would merely constitute a workshop improvement for a person skilled in the art. Moreover, the respondent argued that the subject patent is an attempt aimed at evergreening of the patent since the prior art is also of the appellant.

To decide on the matter, the Court discussed various existing approaches opted across jurisdictions to determine the inventive step of an invention. These approaches include, but are not limited to, obvious to try approach, problem/solution approach, could-would approach, and Teaching Suggestion Motivation (TSM) approach. The Court also cited multiple case laws of different jurisdictions to further elaborate the implementation of such approaches/test to determine the inventive step of the invention. The Court observed that none of these approaches and tests are to be adopted in a straightjacketed manner and in the ultimate analysis, the examiner in the patent office or the Court adjudicating the issue would need to identify the elements in the prior art and compare the same with the claims in question from the point of view of a person skilled in the art. If the same demonstrates a technical advancement over the prior art on the priority date of the application, then the patent would be liable to be granted.

One of the critical factors discussed by the Court in arriving at its judgement was the simplicity of an invention. The Court held that the simplicity does not defeat an invention – even simple inventions are patentable. Therefore, just because an invention appears to be simple, it does not mean that the invention is obvious and is not worthy of being granted a patent.

Further, the Court reiterated the impermissibility of the hindsight by particularly stating that the inventive step must be assessed based on the date of priority of the subject patent and not after the publication of the same, i.e., it is not permissible to do a hindsight analysis or an ex-post facto analysis.

Another interesting factor considered by the Court was the age of the prior art documents considered for judging the inventive step of an invention. The Court particularly stated that one of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious.

For this particular matter, the Court observed that the prior art document D2 belongs to this very Applicant, and the subject patent application was filed almost 18 years after the filing of D2. The complete specification clearly explains the disadvantages of the prior art and sets out in clear terms the various advantages of the subject invention. No other prior art has been cited between the period 1992 till 2010 which has dealt with fasteners in this manner and has even come close to suggesting changes in the prior art fastener stock. If the invention was so obvious, fasteners and fastener stock being products used in bulk in industries, any third party could have made the changes in the prior art to arrive at the subject invention – which obviously has not happened. Therefore, the Court gave significant importance to the age of the prior art documents in arriving at their decision, which is a logical approach and can be opted wherever applicable while defending other patents applications before the IPO as well.

Furthermore, the Court reiterated the importance of the problem statement of the application-in-question. The Court stated that the fact that it was not obvious to a person skilled in the art is clear from the lack of any other prior art document addressing the problems in the prior art and suggesting any solutions close to the invention despite the gap of more than 18 years. While this observation by the Court relies on the age of the document, it also reiterates the relevance of the problem statement of the prior art documents to determine whether they can even be considered by the person skilled in the art as relevant. It is understood that the person skilled in the art must have some motivation to even consider a document as relevant, and the problem statement of the invention-in-question makes for the valid motivation in that context. Therefore, if the problem statement of the cited prior art document is different than the problem statement of the invention, it can be argued that the person skilled in the art may not even have any motivation to arrive at this document in an attempt to look for a solution of the problem as addressed by the invention.

To conclude, the Court held that D1 and D3 are of a period prior to D2, though, dealing with fastening guns and fasteners. The closest prior art identified is D2 and the subject application discloses a technical advancement in comparison with the closest prior art and the features comprising inventive step are not obvious to a person skilled in the art and therefore, the subject patent application satisfies the test of inventive step. The differences which the Controller describes as `superficial’ may appear simple but clearly have an impact on the product concerned. The description of the said differences as superficial would, therefore, be misplaced.

Moreover, particularly to address the allegation of the Respondent about evergreening, the Court relied on the fact that the corresponding patent applications have already been granted in the USA, Japan, South Korea, and China, and accordingly held that the issue of evergreening raised in the submissions would not arise in these facts. Therefore, the Court gave due consideration to the successful prosecution history of the application in other jurisdictions, which sometimes is not the case with the IPO. In light of the abovementioned facts, the Hon’ble High Court has passed an order to allow the patent to proceed for grant.

To summarise, the Court through this order discussed factors, such as the simplicity of the invention, the impermissibility of the hindsight, age of the prior art document, the relevance of the problem statement of the prior art documents, and prosecution history of the application in other jurisdictions to determine the inventive step of the invention. It would not be unreasonable to say that this order has provided further clarity on the inventive step analysis and can henceforth be cited in the arguments to defend an application before the IPO. Moreover, considering the increasing interest of the applicants to file their applications in India, this decision could be seen as a welcoming step towards further building the applicants’ trust in the IP framework of India. The persistent efforts being made by the IPO along with such decisions by the Higher courts will encourage the applicants to file more applications in India, which would in turn contribute to the strengthening IP framework of the country.

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