The Definition of Inventive Step

1The Patents Act defines an invention to mean a new product or process involving an inventive step and capable of industrial application. Section 2(1)(ja) defines inventive step as follows:

... ‘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.

2The above definition was introduced by the Patents (Amendment) Act 2005 which replaced the earlier definition on inventive step that read: (Patents Act 1970, s 2(1)(ja) as amended by the Patents (Amendment) Act 2002 with effect from 20 May 2003.)

... ‘inventive step’ means a feature that makes the invention not obvious to a person skilled in the art.

3With regard to inventive step involved in the preparation of pharmaceuticals, s 2(1)(ta) introduces a new qualification. It defines ‘pharmaceutical substances’ as an entity produced by at least one inventive step. It reads:

‘pharmaceutical substance’ means any new entity involving one or more inventive steps.

4The obviousness of an invention has to be determined with reference to ’the state of the art’. The statutory exceptions to anticipation contained in ss 29 to 34 will be relevant for determining ‘what was publicly known or publicly used in India or what was published in India or elsewhere’. For the purpose of s 64(1)(f), no account shall be taken of any personal document, secret trial or use and importation for reasonable trial or experiment as detailed in s 64(2).

5‘Inventive step’ forms one of the three prerequisites for the grant of a patent for an invention. Inventive step refers to the ingenuity in making the leap from the closest prior art which was not obvious to a person skilled in the art. The Patents Act refers to ‘inventive step’ and ’not obvious’ co-jointly, for if an invention is to ‘involve an inventive step’ it should certainly be ’not obvious’ to a person skilled in the art. In other words, if it is established that the ‘alleged invention is or was at the material date obvious as that word is commonly used, then it follows that it did not involve any inventive step’. (See Benmax v Austin Motor Co Ltd (1953) 70 RPC 284, p 288 (CA).) The policy behind the above provision is to ensure that a person ‘should not be prevented by a statutory monopoly from doing something which, at the date of the patent, was obvious’. (See Brugger v Medic-Aid Ltd (1996) RPC 635, p 653.)

6Learned judges and authors have referred to the test for determining lack of inventive step as the test for ‘obviousness’ or ‘inventiveness’. There are various factors that a court will have to consider in determining whether an invention involves an inventive step, some of which are developed by the courts of law, like the need to overcome a difficulty in the prior art. (See Williams v Nye (1890) 7 RPC 62; Wood v Raphael (1897) 13 RPC 730; Layland v Boldy & Sons Ltd (1913) 30 RPC 547.) Other factors are incorporated in the statute. Even if an invention is novel and useful, it will still not be a subject matter of a patent if it does not involve an inventive step.

7The ingredients of inventive step as defined in s 2(1)(ja) of the Patents Act may be analysed as follows:

(1) The feature of an invention should involve

(a) technical advance as compared to the existing knowledge or (b) economic significance or (c) both, and (2) such a feature should make the invention not obvious to a person skilled in the art.

8Thus, the section makes two requirements for determining inventive step, ie: (1) the feature should involve technical advance over the existing knowledge or economic significance (technical advancement or Economic significance); and (2) the feature should not be obvious to a person skilled in the art (obviousness). The two requirements are discussed below in detail.

9In Genmab v Assistant Controller of Patents and Designs (2024) the Madras High Court, holding that there was “no basis to the conclusion that the claimed invention either lacks technical advancement over the cited prior art or that it would have been obvious to a person skilled in the art”, said that “it should also be noticed that the prior art cited herein was also cited either in the International Search Report (ISR) or in proceedings before the European Patent Office(the EPO) or the United States Patent Office (the USPTO). While this is not dispositive, it is a material consideration.” (para 29)

10In F Hoffmann-La Roche v Cipla (2012) the Delhi High Court held that “the definition of” “inventive step” “nowhere accords any differential treatment to any particular type of invention.” (para 41) It held that “These are conjunctive requirements u/s 2(ja) which means that not merely there should be a technical advancement in the invention but at the same time, it should not be obvious to the person skilled in art.” (para 43) It concluded that “as per the provision of Patents Act there is nothing which is indicative of the fact that any stricter approach is to be followed while testing the patents relating to chemical compounds” (para 44).