Though writing should be a regular affair when it comes to blogging but professional commitments intertwined with family responsibilities do not really leave much room to do so!
What sparked this blog was the conundrum surrounding the Computer Related Inventions (CRIs) and their patentability in India in light of Section 3(k) of the Patents Act, 1970. In December 2019, the Delhi High Court in Ferid Allani vs. Union of India (2019 SCC Online Del 11876) examined the rejection of a patent by the Intellectual Property Appellate Board (IPAB) to a CRI and held that most inventions of the present era make use of computer programs and therefore, it would be discriminatory to reject a patent application to such inventions for merely making use of computer programs in its functioning. The Court further held that a patent application is to be evaluated with respect to its technical contribution.
However, the Court did not elucidate a definition of what can be construed as an invention exhibiting a technical effect or a technical contribution leaving it to be interpreted on case to case basis and therefore the conundrum surrounding these terms still persists.
This reading further led to me re-visit the inventive step assessment in Indian Context.
For any invention to qualify the threshold of an inventive step, essential ingredients of Section 2(1)(j) must be satisfied as mentioned below:
1. That the said invention involves a technical advancement as compared to existing knowledge or economic significance or both; and
2. That makes the invention non obvious to the persons skilled in art.
It is fun reading the case laws wherein the term inventive step was elaborately discussed. Of course, the position held in Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries still holds good.
In a comparatively recent decision, F. Hoffmann-La Roche & Ors. vs. Cipla Ltd., 2016 (65) PTC 1 (Del), the Divisional Bench of Delhi High Court said that in order to determine obviousness or lack of inventive step, following inquiries are required to be conducted:
Step No.1 - To identify an ordinary person skilled in the art;
Step No.2 - To identify the inventive concept embodied in the patent;
Step No.3 - To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date;
Step No.4 - To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications;
Step No.5 - To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindsight approach.
The policy behind the law in this area is that one trader should not be prevented by a statutory monopoly from doing something which, at the date of the patent, is obvious. A trader must be free to adopt a product, process or design which is the, or one of the, obvious modifications over what has gone before without the need to look over his shoulder to consider whether it is protected by a patent. Obviousness is tested against the mental and developmental norm of a notional uninventive person skilled in the art. In doing that the law is protecting not only established business which may wish to adopt a new product, process or design or modify existing ones but also the new entrant who has employed person skilled in the art to help him get into the market. Each of those categories of traders must be free to adopt what is obvious. (Brugger vs. Medico Aid [1996] RPC 635 at 653).
The question of obviousness is seldom easy to decide though!
~until next time~
Cheers to innovations and inventors!
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