About two thirds of all patent requests in India do not make the cut. A frequent reason? Problems related to the ‘inventive step’. That is not a small number. Trying to patent something in India can feel like navigating a maze, with proving that inventive step often the biggest challenge. A 2019 WIPO report drives home the point that figuring out inventive step demands a solid handle on the invention’s technical side plus the legal goalposts set by Indian courts. I will explain how Indian courts size up inventive step, using key decisions and common threads. I want to clarify this vital part of patent law for both inventors and legal eagles. This is especially relevant if you plan to file a patent in India.
What Is Inventive Step in Indian Patent Law?
The idea of inventive step, detailed in Section 2(1)(ja) of the Patents Act, 1970, presents a basic question: would the invention have been clear to a person having ordinary skill in the art (PHOSITA)? This seemingly simple question can get very complicated very quickly. The Indian Patents Act says that to get a patent, an invention must be new and able to be used in industry. Also, it needs to include an inventive step that would not have been obvious to a skilled individual. This makes sure that patents reward real progress, not just small changes to existing tech. Guarding your patent rights relies on this.
How a Skilled Person Sees It
The PHOSITA is a made up person with average knowledge and skill in the needed technical area. This person is not an inventor. They have a firm grip on current knowledge and practices in their field. When looking at inventive step, courts ask if the invention would have been clear to this person when it was created. We assume the PHOSITA knows all public information and can use common sense and logic. This helps courts decide if an invention truly earns patent protection, or if it simply extends what is already known.
Major Indian Court Decisions About Inventive Step
A few influential court rulings have formed how we understand and use inventive step in India. These cases give useful insight into what courts look at when deciding if an invention is actually inventive. Now, I will walk you through some.
M/s. Bishwanath Prasad Radhey Shyam vs. M/s. Hindustan Metal Industries
This Supreme Court decision is a key part of Indian patent law. It set up vital rules for judging inventive step. The court said that an invention has to display real ingenuity and cannot just be a small improvement. The court also stressed how vital it is to think about what was known when the invention was made and what a skilled person would have understood. This ruling made patentability more difficult, protecting only truly new inventions.
F. Hoffmann-La Roche Ltd. vs. Cipla Ltd.
This Delhi High Court case involved a drug patent. It gave more detail on how to judge inventive step. The court warned against using hindsight when judging obviousness. The invention must be judged from the view of a skilled person when the invention was made, without knowing what the invention is. The court also talked about the problem solution way, which the European Patent Office often uses to judge inventive step. This way includes naming the technical problem the invention fixes and then deciding if the solution would have been clear to a skilled person.
Novartis AG vs. Union of India
This Supreme Court case focused on if a certain form of imatinib mesylate (Gleevec) could be patented. The court clarified Section 3(d) of the Patents Act, which deals with patenting new forms of known things. The court decided that a new form of something can only be patented if it greatly improves how well it works compared to the original thing. This ruling made it harder to patent small improvements in the drug industry.
What the Courts Take Into Account
Indian courts weigh several items when deciding if an invention has an inventive step. These things include:
- What was already known in the related technical area when the invention was made?
- What would a person with average knowledge and skill in the area have known and been able to do?
- What are the main differences between the invention and what was previously known?
- Would a person with average knowledge and skill have been able to create the invention based on what was already known?
- Does the invention give a technical progress or economic gain over existing tech?
Plans for Those Applying
Those applying for patents often get pushback from patent examiners about the inventive step of their inventions. Here are some plans those applying can use to deal with these objections:
- Clearly state the technical problem that the invention fixes and why fixing it was hard.
- Show that the invention gets unexpected results that were not predictable.
- Show the pluses of the invention over existing techs, like better performance, lower cost or better efficiency.
- Show that the invention has gotten commercial success, suggesting it was not obvious.
- Get expert testimony from people in the area who can explain why the invention would not have been clear to a skilled person.
The Future of Analyzing Inventive Step
How we read and use inventive step continues to change in Indian patent law. Courts are pushing for a complete and fair judging of inventive merit more and more. They are also thinking about the details of each case and the technical details of the invention. As tech moves forward and new challenges pop up, the legal structure around inventive step will continue to change. I think keeping up with these changes is key for anyone in the patent system.
Conclusion
Judging inventive step in patent law is a complicated process. It calls for a careful look at the invention’s technical points, the legal rules set by Indian courts and the knowledge of a skilled person. By knowing what courts think about and how to get past objections, inventors and legal pros can better work within the patent system. As India’s invention community grows, a solid grasp of inventive step will be vital for growing creativity and moving tech forward. It is not enough to just invent. One must also know how that invention will be seen through the eyes of patent law. The concept of inventive step in patent is something you must understand if you want to file a patent in India and protect your patent rights.
