As per the definition of invention mentioned in the Indian Patents Act, 1970, “invention” means a new product or process involving an inventive step and capable of industrial application;”
It was held in Raj Parkash vs. Mangat Ram Choudhary as under:
“Invention is to find out or discover something not found or discovered by anyone before and it is not necessary that the invention should be anything complicated and the essential thing is that the inventor was the first one to adopt it and the principle therefore is that every simple invention that is claimed, so long as it is something novel or new, would be an invention and the claims and the specifications have to be read in that light and a new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers and the claims for anticipation by the defendant has to be either by prior user or by prior publication”
It was further observed that ‘whether a patent sets out an invention is to be determined by a true and fair construction of the specifications and the claims and in construing the specifications it would be erroneous to rely too much on the title thereof because the title cannot control the actual claim and a misleading title similarly is of no consequence and the words of the specifications should be given their ordinary meaning but where necessary must be construed in the sense in which they are used in a particular trade or sphere in which the invention is sought to have been made and it is the pith and marrow of the invention that has to be looked into and one should not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentee or alleged violators.
Inventive step is defined as, “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“
A patent is granted for an invention. An invention is defined in section 2(1)(j) as “a new product or process involving an inventive step and capable of industrial application.” Therefore, the criteria for an invention to be patentable are –
1. It must be novel
2. It must have an inventive step and
3. It must be capable of industrial application.
Further, the invention should not fall under any of the categories of “Inventions- non-patentable” mentioned under Sections (3) and (4) of the Patents Act, 1970.
Assessment of obviousness: The approach to assessing inventive step or non-obviousness in India is not well defined. Judicial interpretations are usually considered for arriving at the conclusions. Factors used to consider in assessing inventive step include the following:
* an unexpected result;
* a long term solution to a recognized problem;
* a technical achievement which overcomes perception; and
* a commercial realization that meets public need.
The applicants should mention in the specification about the need of the invention in order to provide a better understanding of the invention.
Another factor in testing obviousness is the question that, “Would a person with ordinary skills in the art have thought of the alleged invention?” If the answer is No, then the invention is non- obvious. The question, “Is there an inventive step?” arises only if there is a novelty in the invention. For this purpose, a Person Skilled in the Art should be presumed to be an ordinary practitioner aware of what was general common knowledge in the relevant art at the relevant date. In some cases, the Person Skilled in the Art may be thought of as a group or team of persons rather than as a single person.
India is witnessing an increase in patent enforcement activities. Therefore there certainly is a need to refine the criteria pertaining to the inventive step for the clarity of concepts. Currently, due to lack of Indian cases dealing with inventive step in Indian Jurisprudence, the Indian Patent Office relies on the case laws of other jurisdictions. But it is expected that clarity and solidarity on the assessment of inventive step would increase, as the number of cases filed and decided increases.
