Determining Obviousness

1The expressions 'obvious' and 'does not involve an inventive step' employed in s 64(1)(f) convey the same idea. The Patents Act uses the former to explain the latter. (Ibid, s 2(1)(ja).) An invention will be regarded as involving an inventive step if it is 'not obvious to a person skilled in the art'. (Ibid. The phrase 'not …obvious to a person skilled in the art' also appears in s 3 of the UK Patents Act 1977.) The relevant matter with regard to which obviousness is to be determined, ie, the state of the art, is referred to in s 64(1)(f) as 'what is publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim'. (Patents Act 1970, s 64(1)(f).) To understand the obviousness the following constituents have to be considered:

(a) The subject matter with regard to which obviousness is determined—the state of the art. (b) The object with regard to which obviousness is determined—the person skilled in the art.

2'The state of the art' has been discussed in detail under s 64(1)(e) of the Patents Act which deals with lack of novelty. However, unpublished applications will not be considered as a part of the state of the art for determining the lack of inventive step. Obviousness is tested by the standard of a person skilled in the art. The person skilled in the art is the notional skilled person to whom a particular patent is addressed. The person skilled in the art may vary for inventions in different fields of technology. The person may also mean a group of persons having different expertise in different fields of knowledge. In determining the meaning of the person skilled in the art, the discussions in ch 6 will be relevant.

3Like s 2(3) of the UK Patents Act 1977, s 64(1)(f) of the Patents Act too excludes certain documents for determining obviousness, albeit indirectly. What is disclosed in the state of the art will be regarded as obvious. The disclosure which forms a part of the state of the art for the purposes of determining lack of novelty under s 64(1)(e) will be relevant for determining obviousness under s 64(1)(f). The phrase 'publicly known or publicly used in India' is common to both of the above sections and as such, the discussions on the phrase which appear under s 64(1)(e) will be relevant. However, there are some differences in considering the state of the art for the purposes of novelty and obviousness. The distinction between determining lack of novelty and lack of inventive step arises from the documents that may be referred for the purposes of the state of the art under ss 64(1)(e) and 64(1)(f). The former provision refers to 'what was published in India or elsewhere in any of the documents referred to in s 13', whereas the latter provision refers to 'what was published in India or elsewhere before the priority date of claim'. This imports a vital distinction. The documents mentioned in s 13(1)(b) cannot be taken into consideration for the purpose of determining obviousness as s 64(1)(f) permits one to look only into matters published before the priority date of claim. (See SmithKline Beecham Plc's (Paroxetine Methanesulfonate) Patent [2006] 1 All ER 685, (2006) RPC 10, para 25. Also reported as Synthon BV v Smithkline Beecham Plc [2005] UKHL 59. Here the Synthon application was deemed to form part of the state of the art for the purposes of novelty [under s 2(3) of the UK Patents Act 1977] but not for the purpose of obviousness [under s 2(3) of the UK Patents Act 1977]. It was held that as Synthon relied solely upon s 2(3) matter as prior art, they did not rely and cannot succeed on obviousness.) Section 13(1)(b) provides for taking into account unpublished applications, ie complete specifications published on or after the date of filing of the applicant's complete specification, for the purpose of determining anticipation.

4The issue of whether or not the claimed invention involves an inventive step has to be decided objectively. Section 64(1)(f) defines the objective criterion, which is, to determine whether the step was obvious to a person skilled in the art having regard to any matter which forms part of the state of the art, ie, 'what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim'. The test for determining obviousness is a qualitative test and not a quantitative test. (See Mölnlycke AB v Procter & Gamble Ltd (1994) RPC 49, p 112.)

Mixed Question of law and fact

5In Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978) (paras 23 and 24)the Supreme Court held that obviousness has to be "strictly and objectively judged". Relying on Radio v. John Two & Son Ltd., the Court identified the question to be asked: "Whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known." Determining novelty and inventive step, according to the Court, involves mixed question of law and fact and will depend on the facts of each case.

6In Cipla v F Hoffmann-La Roche (2015) (paras 157 and 158) the Division Bench held that "prior art disclosure should not merely be structurally similar compound but also at least to some degree demonstrate the same desired property which is relied on for the patentability of the new compound" , and that "obviousness is a question of law based on facts and the burden to prove is on the party which alleges however after the party which alleges makes out a prima facie case of invalidity on the ground of obviousness, the burden shifts on the inventor to disprove obviousness."

Advancement of Knowledge

7In Farbwerke Hoechst v Unichem Laboratories (1968) (p 67) the Bombay High Court adopted Halsbury's statement that "merit in any one of these stages, or in the whole combined may support the invention, and it is, therefore, probably more important to consider the advance in knowledge due to the inventor rather than to examine in detail the variations from the former product".

8As the determination of 'obviousness' and 'inventive step' would involve questions of fact and degree, it must be answered in accordance with the general policy of the Patents Act to reward and encourage inventors without inhibiting improvements of existing technology by others. (See Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261, p 291.) The court should go by the language of the statute and not by 'the varied cast of imaginary and sometimes improbable people', described as 'anthropomorphic conceptions' which the law has invented to embody concepts like lack of inventiveness, etc. (See Societe Technique de Pulverisation (STEP) v Emson Europe Ltd (1993) RPC 513, p 519 per Hoffmann LJ (CA).)

9Obviousness is the antithesis of inventiveness. What is obvious cannot be inventive and what is inventive cannot be obvious. (See Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261, p 290.) A step, to be considered as obvious, need not be a routine one. (See Optical Coating Laboratory Inc v Pilkington PE Ltd (1995) RPC 145, p 165, [1993] FSR 310 (CA).) In determining what is obvious, the 'general criterion seems to be whether that which is claimed lies within the limits of development of some existing trade, in the sense that it is such a development as an ordinary person skilled in that trade could, if he wished so to do, naturally, make without any inventive step'. (See Ganendro Nath Banerji v Dhanpal Das Gupta AIR 1945 Oudh 6, p 9.) The courts have disapproved the practice of 'coining' phrases which may later be suggested to be of general application. The discussions on the meaning of the word 'obvious' deliberated in relation to particular facts cannot be of much help. Citing previous decisions on a question of fact cannot be a useful exercise. As observed by Lopes LJ, 'cases, so far as regards the law, are most useful, but when they are applied to particular facts, they, as a rule, are of little service. Each case depends upon its own particular facts and the facts of almost every case differ'. (See Savage v Harris & Sons (1896) 13 RPC 364, p 370 quoted in Mölnlycke AB v Procter & Gamble Ltd (1994) RPC 49, p 113.) Diplock LJ (as he then was) had foreseen the danger of defining the term obviousness in Johns-Manville Corpn's Patent, when he said: ([1967] FSR 327, 332, (1967) RPC 479.)

I have endeavoured to refrain from coining a definition of 'obviousness' which counsel may be tempted to cite in subsequent cases relating to different types of claims. Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about other inventions of different kinds. The correctness of a decision upon an issue of obviousness does not depend upon whether or not the decider has paraphrased the words of the Act in some particular verbal formula. I doubt whether there is any verbal formula which is appropriate to all classes of claims.

10This restraint has been followed in some cases where it was felt that there was no need to go beyond the primary dictionary meaning of the word 'obvious' which means 'very plain'. (See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457, p 460. See also Hallen Co v Brabantia (UK) Ltd (1991) RPC 195, pp 211-212; Mölnlycke AB v Procter & Gamble Ltd (1994) RPC 49, p 112.) The Court of Appeal reiterated the above warning in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc, where Jacob LJ said: ([2007] EWCA Civ 5, para 45, 94 BMLR 122.)

That reminder cannot be repeated too often. The words of the law are simply 'An invention shall be considered as involving an inventive step, if, having regard to the state of the art, it is not obvious to a person skilled in the art' (art 56 EPC). In the end the question is simply 'was the invention obvious?' This involves taking into account a number of factors, for instance the attributes and common general knowledge of the skilled man, the difference between what is claimed and the prior art, whether there is a motive provided or hinted by the prior art and so on. Some factors are more important than others. Sometimes commercial success can demonstrate that an idea was a good one. In others 'obvious to try' may come into the assessment. But such a formula cannot itself necessarily provide the answer. Of particular importance is of course the nature of the invention itself.