Quality of Invention and its Patentability

Introduction

1. 1. The Elements Of A Patent And Patentability

It is interesting to note that the Indian Patents Act, 1970 (herein after called ‘the Act’) doesn’t give an elaborate definition of a ‘patent’. It merely says that a “‘patent’ means a patent for any invention granted under this Act”. Generally speaking, patent is a monopoly right conferred by the Patent Office on an inventor to exploit his invention for a limited period of time. During this period, the inventor is entitled to prevent anyone from commercially exploiting his invention. The person to whom a patent is granted is called a patentee.

This takes us to the S. 2(1)(j) of the Act which defines an ‘invention’ as “a new product or process involving an inventive step and capable of industrial application.” Furthermore, the Act also says that an “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”.

So, it shows that the afore-mentioned three definitions which involve a lot of jargons and they are also all mutually interrelated.

The English Patents Act 1977 (herein after called ‘the 1977 Act’) doesn’t define the term ‘invention’ but it was defined by Lord Hoffmann in Biogen v. Medeva plc. as the addition of a new idea to the existing stock of knowledge and that:-

Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case, the inventive step will be doing the new thing. Sometimes, it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devices a way of solving the problem, his inventive step will be that solution but not the goal itself or the general method of achieving it.

2. 2. ‘Quality’ Of A Patent: Test Of Inventive Step

Patents are mostly sought for inventions which vary from the known only with respect to some minor element or detail. An alleged invention may be said to consist purely in putting two known things together to make a single thing. In order to tackle this problem many patent jurisdictions have made it mandatory to have the present of an ‘inventive step’ for grant of patent. The EPC and the 1977 Act have provided that an ‘inventive step’ is considered to be present if, having regard to the state of the art, the invention is not obvious to a person skilled in the art. It must also be kept in mind at the same time that state of the art is the same broad conception that operates regarding novelty, with a caveat that any prior specifications subsequently published are not taken into consideration.

So, while on one hand, novelty pertains to a ‘quantitative assessment’, inventive step is concerned with ‘qualitative assessment’, i.e., the level of improvement in simple words. In the famous case of Windsurfing v. Tabur Marine, this yardstick was said to be involving the following four stages (herein after called ‘the Windsurfing test’):-

1. The court must identify the inventive concept embodied in the patent.
2. It must assume mantle of the normally skilled but unimaginative addressee in the art at the priority date and impute to him what was at the date, common general knowledge in the art in question.
3. It must identify what, if any, differences exist between the matters cited as being “known or used” and the alleged invention.
4. It must ask itself whether, viewed without any knowledge of the alleged invention, those differences constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

It must also be borne in mind that Windsurfing test doesn’t amount to any modification or supplement to the statutory text, it merely lays down a structured way of addressing the issue whether inventive step was involved in a particular patent application or not.

But if we talk about ‘simple inventions’, obviously there is an inventive step involved but once the invention comes to the knowledge of the public, there is a likelihood that they might think that it was ‘too obvious’. It happens because the separation between novelty and inventive step is very less with regard to ‘simple inventions’. As it was said in Haberman v. Jackel International Ltd.regarding such inventions:-

It is normally easy to understand how they work. From this it is but a short step to thinking that a competent technician in the art would have realized, starting from the same simple principles, why the solution proposed by the patentee should have worked…the simple the solution, the easier it is to explain. The easier it is to explain, the more obvious it can appear. This is not always fair to the inventors.

1. 1. Complexities Involving Inventive Step

1. 1. Determination Of Obviousness Of Invention

The EPO seeks to develop an approach to the assessment of inventive step which is objective, economical, and transparent so as to provide certainty in this regard. The technique chosen to achieve this end is known as ‘the problem and solution approach’. This is based on an image of the invention as a solution to a problem. Accordingly, an inventive step is seen as ‘a step from the technical problem to its solution’.

The UK law has largely remained isolated from and resistant to the adoption of the problem and solution approach. Rather when considering the way in which an invention is to be interpreted they have relied upon the approach setout in Windsurfing case. But the strongest support for the use of the problem and solution approach comes from the a House of Lords’ decision in Biogen v. Medeva where Lord Hoffmann said that a ‘proper statement of the inventive concept needs to be include some express or implied reference to the problem which it required invention to overcome.

It must be borne in mind that different approaches have been adopted at the UK and the EPO, there are enough similarities for them to be dealt with together. Perhaps the best starting point for thinking about whether an invention is obvious is with S. 3 of the 1977 Act which states that an invention is taken to involve an inventive step ‘if it is not obvious to a person skilled in the art, having regard to any matter that forms part of the state of the art’.

For an invention to be patentable, non-obviousness is required in addition to novelty. In Cuno Engr. Corp. v. Automatic Devices Corp, the US Supreme Court said that, “the new device…must reveal the flash of creative genius and not merely the skill of the calling.” In Hotchkiss v. Greenwood, the Court found a method of making doorknobs had “an absence of that degree of skill and ingenuity, which constitute essential elements of every invention.” On the other hand, in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., the Court refused to find invention in a countertop extension for customers waiting to pay the cashier. The court held, “a standard of invention appears to have been used that is less exacting than that required where a combination is made up entirely of old components”.

2. 2. Complexities Involved In Inventive Step Determination

Where a granted patent is challenged on the ground of lack of inventive step, it is important that this is judged at the priority date of the patent rather than using the benefit of hindsight. This is especially so where the invention comprises a number of previously known integers. The danger of applying an ex post facto analysis to the question of obviousness was noted in British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik, where the Court held the following:-

I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not a invention, because, when it has once been established, it is easy to show how it might be arrived at by starting with something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to inventors, and in my opinion, it is not countenanced in English patent law….

Thereafter, a new case came up which further intensified the debate surrounding the topic. This case is Graham v. John Deere Co.where a test for patentability under S. 103 was enunciated as follows:–

Under S.103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unresolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

2. 2. Simple Inventions And Their Patentability

1. 1. Simplicity Is No Bar For Grant Of Patent

There is no objection to a patent that the invention claimed there is a simple one. The means whereby the object is attained may be perfectly simple and perfectly common, but yet there may be an invention if the patentee has discovered a variant which will render more useful that which has been previously described. In Vivkers & Sons & Co. Ltd. v. Siddel, Lord Herschell said: “There is no doubt about the law applicable to such a situation, though it is often difficult to apply it to the circumstances of a particular case, and its application is perhaps the most difficult when the alleged invention consists of a new apparatus combining known elements. If the apparatus be valuable by reason of its simplicity, there is a danger of being misled by that very simplicity into the belief that no invention was needed to produce it. But experience has shown that not a few inventions, some of which have revolutionized the industries of this country, have been of so simple a character that when once they were made known it was difficult to understand how the idea had been so long in presenting itself, or not to believe that they must have been obvious to everyone.”

2. 2. Mosaicing And Long Felt Want

It is not sufficient to make a mosaic of prior publications and to say that the whole invention has been disclosed. But it has been observed that when dealing with obviousness unlike novelty, it is permissible to make a ‘mosaic’ out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.

On the other hand, when once it has been found that the problem had awaited solution for many years and that the device is in fact novel and superior to what had gone before and has been widely used and used in preference to alternative devices, it is practically impossible to say that there is not present that scintilla of invention necessary to support the patent.

3. 3. Patent Of Addition: An Exception To Inventive Step

The Indian Patents Act provides for filing and granting a special type of patent called ‘patent of addition’ in respect of any improvement in or modification of an earlier application called the main invention for which a patent has been granted and is in force or an application has been made and is pending. It should be noted that there is no necessity of inventive step for such a patent, but only some novelty. It is because in the course of working of his invention covered in a patent, the patentee may effect modifications which may themselves not possess an inventive quality. Its utility can be to add to the commercial value/ success of a particular product.

3. 3. Conclusion

Our patents regime mandates that there must be an inventive step to give rise to an invention; provided it is capable of industrial application. Now, the quality of an invention can be assessed on the basis of the inventive step involved. Sometimes, it might happen that people had wanted to do something but could not think how to do it and in that case inventive step lies in finding a way of doing it. The way the goal is achieved in this case is the inventive idea. In yet other cases, many people might be ignorant of how to solve a certain problem despite having a general idea of the way they might achieve their goal. Now, if someone creates a method of solving this problem, this solution will be called the inventive step in its essence.

The EPC and the 1977 Act have provided that an ‘inventive step’ is considered to be present if, having regard to the state of the art the invention is not obvious to a person skilled in the art. Apart from this, the Windsurfing test is still applicable in today’s time while assessing the patentability of any product and it expressly calls for the requirement of an inventive step.

The determination whether a subject matter of patent involves an inventive step or not is a complex issue because of the reason that after a disclosure has been made, it might appear very obvious to the assessing authority and they might hold that there is no inventive step involved. This complexity rises even more when it comes to simple patents wherein when the disclosure is made, the impression it gives it is that it was always available in the public domain but no one could ‘see’ it. So, most of the times, simple inventions appear to cater to the long felt needs of the society.

Lastly, it is the patent of addition the nature of which is that of improvement in a patented material; the improvement not being an inventive step but it might still contain novelty. The rationale of allowing a patent of addition is that it will surely improve the utility of a patented product and is more likely to add to its commercial success.

So, overall, it can be said that inventive step pertains to a qualitative assessment of a subject matter of a patent and even though such a step might look very obvious but if it had not occurred to anyone in the society, it is patentable.

Bibliography

Primary Resources:

Statutes:

• The Indian Patents Act, 1970.
• English Patents Act 1977.
• European Patent Convention.

Cases:

• Biogen v. Medeva plc [1997] RPC 1.
• British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik(1910) 27 RPC 209.
• Cuno Engr. Corp. v. Automatic Devices Corp314 U.S. 84, 62 S.Ct. 37.
• Graham v. John Deere Co383 U.S. 17 (1966).
• Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. 340 U.S. 147, 71 S.Ct., 127, 95 L.Ed. 162 (1950).
• Haberman v. Jackel International Ltd [1999] FSR 683.
• Hotchkiss v. Greenwood52 U.S. (11 How.) 248, 13 L.Ed. 683 (1850).
• Molins v. Industrial Machinery {(1938) 55 RPC 31, CA}.
• Samuel Parker & Co. v. Cocker Brothers (1929) 46 RPC 241.
• Teste v. Coombes (1924) 41 RPC 88 at 105.
• Vivkers & Sons & Co. Ltd. v. Siddel (1870) 7 RPC 292 at 304.
• Windsurfing v. Tabur Marine [1985] RPC 59.

Secondary Resources:

Books:

• Ahuja, V.K. Law Relating to Intellectual Property Rights, ed. 2007, LexisNexis, New Delhi.
• Bainbridge, David, Intellectual Property, 5th ed., 2002, 1st Indian rep. 2003, Pearson Education Pub., New Delhi.
• Bently, Lionel and Brad Sherman, Intellectual Property Law, 1st Indian ed., 2003, OUP, New Delhi.
• CB, Dr. Raju and Dr. Sreenivasulu NS, Biotechnology and Patent Law, 1st ed., 2008, Manupatra Information Solutions Pvt. Ltd., Noida
• Cornish, W. and D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 6th ed., 2007, Sweet and Maxwell, London.
• Epstein, Michael A., Epstein on Intellectual Property, 5th ed., 2008, Wolters Kluwer Pub., New Delhi, p. [5-18].
• Kankanala, Dr. Kalyan C., Genetic Law: Patent And Strategy, 1st ed., 2007, Manupatra Information Solutions Pvt. Ltd., Noida.
• Narayanan, P., Patent Law, 4th ed., 2006, Eastern Law House, Kolkata.
• Saharay, H.K., Commentaries on Patents Act, 1970 with Patent Rules, 2003, 1st ed., 2007, Kamal Law House, Kolkata
• Subbaram, NR, Patent Law: Practice and Procedures, 2nd ed., 2007, Wadhwa and Co., Nagpur.

Urls:

• http://www.thefreedictionary.com/patentability
• http://www.google.com/#hl=en&q=inventive+step+in+simple+inventions&aq=f&aqi=&aql=&oq=&gs_rfai=&fp=a2bb30ecf4f91972
• http://www.ipengineservices.com/services-research.php
• http://spicyipindia.blogspot.com/search?q=quality+of+invention
• http://www.google.com/search?hl=en&client=firefox-a&hs=6tf&rls=org.mozilla%3Aen-US%3Aofficial&q=merrell+dow+v.+norton&aq=f&aqi=&aql=&oq=&gs_rfai=
• http://docs.google.com/viewer?a=v&q=cache:JLo_anOpulAJ:www.law.uvic.ca/manson/366/course_materials_pass/documents/366-MerrellDow.pdf+merrell+dow+v.+norton&hl=en&pid=bl&srcid=ADGEEShplm5sGIz_yqZ2y3QlSP3ayS-LSPW1gDcYIe4DUz-XWZ9VPF9DoCGOqg9L1zpaL5LQzfrw3jI-xJQq6Lvk4WK1xnYdJNKYOtArlqMjnuSvAjCBqUTRxw4YQIXlKC_wIp2hFzMn&sig=AHIEtbSN0F8AK5qMGAWE68Z8VJqqJhx4Jg
• http://www.ebc-india.com/practicallawyer/index.php?option=com_content&task=view&id=10614&Itemid=5