Inventive Step and Non-Obviousness

1. Why novelty is not enough

Novelty asks only whether the exact invention was disclosed before. A trivial variation, such as changing a material, scaling up a device or combining two known parts that each do what they always did, would be new but would add nothing to knowledge. Granting monopolies over such steps would let patentees fence off routine engineering. The second requirement, called inventive step in India, the UK and Europe and non-obviousness in the United States, keeps the monopoly for contributions that go beyond what a competent worker would do as a matter of course.

2. The Indian definition

Section 2(1)(ja) of the Patents Act, 1970, inserted in 2005, defines 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.” Three points follow.

• Two qualifying limbs, one decisive test. The feature must show technical advance or economic significance, but in every case it must also make the invention not obvious. Economic significance alone, such as a cheaper process, does not make an obvious step inventive.
• Existing knowledge means the prior art as of the priority date: published documents anywhere, prior use, and common general knowledge of the field.
• The person skilled in the art is a legal fiction: a person of ordinary skill in the relevant field who knows the common general knowledge, reads all the prior art, but has no inventive capacity. In complex fields the courts accept that this may be a team.

3. The Indian case law

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1978 INSC 258, (1979) 2 SCC 511, is the leading Supreme Court decision. A patent over a process for making metal utensils was revoked. The Court held that the test is whether the alleged discovery is so obvious that it would at once occur to a person reasonably versed in the principles of the art, as distinct from a person who has the benefit of hindsight. A mere workshop improvement, or the use of a known device to give a known result, is not an invention. A combination of old integers is patentable only if, by their interaction, they produce a new result or an old result more cheaply or better, not where each part simply performs its own function.

The Delhi High Court has since built the modern test. In F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (Division Bench, 2015), concerning the cancer drug erlotinib, the Court set out a structured inquiry drawing on the UK approach: identify the inventive concept of the claim; identify the person skilled in the art and the common general knowledge; identify the differences between the prior art and the claim; and ask whether, without knowledge of the claimed invention, those differences constitute steps that would have been obvious to the skilled person. The Court warned against hindsight reconstruction, where the judge already knows the answer and works backwards to it.

4. United Kingdom: Windsurfing and Pozzoli

In Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd. (Court of Appeal, 1985) the court framed a four-step test, restated in Pozzoli SpA v. BDMO SA (Court of Appeal, 2007):

1. identify the notional person skilled in the art and the relevant common general knowledge;
2. identify the inventive concept of the claim, or construe it;
3. identify the differences between the matter cited as the state of the art and the inventive concept;
4. ask whether, viewed without knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled person, or whether they require any degree of invention.

The UK courts add secondary considerations: long-felt want, commercial success attributable to the invention, and the failure of others. In Actavis v. ICOS (UK Supreme Court, 2019) the court held that a dosage regime reached by routine clinical trials was obvious, and that the motive to pursue a known line of research weighs against inventiveness.

5. United States: Graham and KSR

Section 103 of the US Patent Act bars a patent if the differences between the claimed invention and the prior art are such that the invention as a whole would have been obvious to a person having ordinary skill in the art. Graham v. John Deere Co. (US Supreme Court, 1966) set the factual inquiries: the scope and content of the prior art, the differences between the art and the claims, the level of ordinary skill, and objective indicia (commercial success, long-felt need, failure of others). The Federal Circuit later required a “teaching, suggestion or motivation” in the prior art to combine references. In KSR International Co. v. Teleflex Inc. (US Supreme Court, 2007) the Court rejected that as a rigid rule: a person of ordinary skill is also a person of ordinary creativity, and a combination that was “obvious to try” among a finite number of predictable solutions may be obvious.

6. The EPO problem-solution approach

Article 56 of the European Patent Convention says an invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The Boards of Appeal apply the problem-solution approach: (1) determine the closest prior art; (2) establish the objective technical problem the invention solves over it; (3) ask whether the claimed solution would have been obvious to the skilled person starting from the closest prior art. The question is not whether the skilled person could have arrived at the invention but whether he would have done so in the hope of solving the problem (the “could-would” test).

7. Hindsight and the secondary indicators

Every inventive step inquiry faces the same risk: once an invention is explained, it looks simple. Courts guard against this by fixing the skilled person at the priority date, by refusing to piece together prior art references with the invention as a map, and by giving weight to evidence that the industry had looked for a solution and failed. Commercial success is weaker evidence, because it may result from marketing rather than invention, and courts ask whether it flows from the claimed feature.

How this is examined

Short note: definition in section 2(1)(ja), the skilled person, the Biswanath test, one line on Windsurfing/Pozzoli. Essay on patentability: put inventive step between novelty and industrial application and compare the four systems in the table. A good LL.M. answer notes that the Indian “economic significance” limb has no exact counterpart in TRIPS and explains why it cannot replace the non-obviousness inquiry.