Introduction
This article examines the decision made by the Hon’ble High Court of Delhi (‘High Court’) on an appeal (2022/DHC/004697) filed under Section 117A(2) of the Patents Act, 1970 (‘Patents Act’). The appeal was filed by Avery Dennison Corporation (‘Appellant’) seeking to set aside an order passed by the Controller of Patents and Designs (‘Respondent’) refusing the grant of the Appellant’s patent application for lacking inventive step. The High Court, after considering the facts of the case, decided that the assessment of the claimed invention by the Respondent was erroneous and directed that the patent application may proceed for a grant. The article further highlights the fundamental principles discussed by the High Court for analysis of an ‘inventive step’ in India.
Facts of the case
The Appellant filed a patent application titled 'Notched Fastener' bearing an application number 5160/DELNP/2013 (‘Application’), which is a National Phase application arising out of PCT application number PCT/US2011/062189. A First Examination Report (‘FER’) with a statement of objections was issued, wherein the Respondent primarily objected to the inventive step of the invention claimed in the Application under Section 2(1)(ja) of the Patents Act in view of D1: GB2053296A (published on 4 February 1981), D2: WO 94/10044A1 (published on 11 May 1994), and D3: US4456123A (published on 26 June 1984).
The Appellant filed its response to the FER along with amended claims. It was argued that the inventive step of the Application was based on four features of the fastener; namely, the creation of the notch, the shape of the notch, the position of the notch and the direction of the notch in relation to the cross-pieces; while the technical advancement of the Application lay in consistent cutting or severing of the fasteners from the fastener stock.
However, the Respondent maintained the objection to the inventive step by issuing a Hearing Notice, following which a hearing was conducted and thereafter written submissions were filed by the Appellant.
Thereafter, the Respondent refused to grant the Application on the ground of lack of an inventive step while specifically relying on documents D2 and D3. Aggrieved by the decision of the Respondent, the Appellant filed the appeal, seeking to set aside the refusal order issued by the Respondent.
While arguing the matter, the Appellant's counsel relied on the specification of the Application, the written submission and the amended claims therein to establish the inventive step of the invention, arguing that the technical advancement of the invention lies in overcoming the variation in the length of the fastener being cut due to elasticity, which is achieved by using the claimed notches. The counter argument provided by the Respondent was that from the disclosure of D2, a person skilled in the art can easily arrive at the claimed invention by merely changing the shape of the notch described in D2 which constitutes a workshop improvement, placing reliance on the impugned order. Therefore, the invention does not involve an inventive step.
The main issue before the High Court was whether there was a shortfall of an inventive step given the disclosures made in the documents D1 to D3, specifically D2 and D3.
Emergence of various approaches towards Inventive Step analysis
The High Court, while making a decision on the matter, discussed the various approaches available for determining the inventive step which were followed across various jurisdictions, mentioning the following in particular:
- ‘Obvious to try’ approach: Rather than a test for analysing the inventive step itself, this is a rationale used to support the finding of lack of inventive step. The examination guidelines for determining obviousness under 35 U.S.C. 103 as issued by the United States Patent and Trademark Office (USPTO) defines ‘obvious to try’ as “choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;”, in view of the Supreme Court’s decision on KSR International Co. Teleflex Inc. (2007)[1] wherein the Supreme Court held that ‘obvious to try’ was a valid rationale for an obviousness finding.
- Problem/solution approach: This approach is primarily employed by the European Patent Office (EPO), and it involves three stages, as listed under the guidelines for examination in the EPO, namely, (i) determining the “closest prior art”, (ii) establishing the "objective technical problem" to be solved, and (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a person skilled in the art. The Division Bench in Roche Cipla (2016)[2] also discusses this test.
- Could-would approach: This approach has also been listed under the guidelines for examination in the EPO, as part of the third stage of the problem/solution approach (considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person). The question arises that whether there is any teaching in the prior art as a whole that would and not simply could have prompted a skilled person, with the knowledge of the objective technical problem, to either modify or adapt the closest prior art to arrive at the subject matter of the claims.
- Teaching-Suggestion-Motivation (TSM) test: This test originated in the USA and was set forth in Graham John Deere Co. (1966)[3], according to which the factual inquiries to be addressed in determining obviousness are, namely, determining the scope and content of the prior art; ascertaining the differences between the claimed invention and the prior art; and resolving the level of ordinary skill in the pertinent art. The US Supreme Court’s decision in KSR International Co. v. Teleflex Inc.1 provided further flexibility to the application of this test for assessing the obviousness of an invention.
The High Court further lays down a timeline on how the approaches towards assessment of inventive step evolved over the years and in different circumstances on a case-to-case basis, additionally discussing the five-step approach for assessing inventive step which is followed in India, as prescribed by the order of the Division Bench in Roche v. Cipla (2016)2, that includes the avoidance of hindsight analysis while assessing the inventive step of an invention. With regards to hindsight analysis, an important case which was also discussed was the Bristol-Myers Squibb Holdings Ireland Unlimited Company & Ors. v. BDR Pharmaceuticals International Pvt. Ltd. &Anr.; CS(COMM) 27/2020[4], wherein the High Court ruled that the party claiming obviousness must be able to demonstrate not only the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art, without prior knowledge of the invention.
The High Court then discussed the pivotal four-step test for determining inventive step laid down by the House of Lords in Windsurfing International Inc. v. Tabur Marine Ltd (1985)[5], wherein the test involved the following steps:
- Identifying the inventive concept embodied in the patent application
- Imputing to a normally skilled but unimaginative addressee what was the common general knowledge in the art at the priority date of the application
- Identifying the differences, if any, between the matter cited and the alleged invention
- Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps that would have been obvious to the skilled person or whether they required any degree of invention
The England and Wales Court of Appeals, in the matter of Pozzoli Spa v. BDMO SA (2006)[6] provided further modifications for the test given in Windsurfing, followed which the Division Bench of the High Court in the matter of Roche v. Cipla (2016)2 established the five-step analysis which is now being majorly used to analyse the inventive step of an invention. The High Court also reiterated that it is important to carry out a proper analysis of the inventive step of an invention, and that merely arriving at a bare conclusion that an invention lacks inventive step would be contrary to Section 2(1)(ja) of the Patents Act, citing Agriboard International LLC. v. Deputy Controller of Patents & Designs (2022)[7].
The High Court impressed upon the fact that all the approaches and tests need to be adapted and applied according to the facts of the case. In certain scenarios, an approach combining more than one test may also be required, depending on the invention and the prior art documents to be analysed. This approach was taken by the UK Supreme Court in Actavis v. ICOS (2019)[8], wherein the Court provided a non-exhaustive list of ten relevant considerations to be made while assessing obviousness.
Decision
The High Court while deciding this case laid down some of the fundamental principles for analysing inventive step, which have been discussed individually hereinbelow:
Simplicity in the invention cannot be a deterrent to patent grant
The High Court emphasized that just because an invention is simple, or that the inventive concept behind it is simple, it should not be a reason to prevent the grant of the invention. The High Court took support from the Vickers v. Siddell (1890)[9] case, wherein the House of Lords, when considering simplicity in an invention, noted that if an invention has a simple inventive concept, then during the analysis of the same, one could be deceived into believing that no inventive skill is required to arrive at it. A similar observation was made in the decision of the Privy Council on an appeal from the Supreme Court of Canada in Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd. (1929)[10].
Time gap between prior arts and the invention being examined should also be accounted for while analysing obviousness
The High Court also pointed out that if a long time has passed since the publication of the prior art documents and a simple change, which no one had thought of, contributes to a significant technical advancement, then the Court would be inclined to consider the invention as non-obvious. The judgement by the UK Patents Court in Brugger v. Medic-Aid Ltd. (1996)[11], also shared the same sentiment, stating that the age of a prior art document may be an indication that a development from it is non-obvious, and therefore patentable. Also, Terrel on Law of Patents in its 16th Edition propound the point that the age of the prior document is critical in order to ascertain the case of obviousness. Document D2, which is the closest prior art, was published in 1994, while the Application was filed in 2013, with the corresponding PCT application filed in 2011. This resulted in a time gap of more than 18 years between the Application and the prior art documents. The complete specification of the Application discussed the drawbacks of the prior art and highlighted how the invention of the Application is advantageous over the same. In the time gap of almost 18 years, there was no other prior art document which suggested the changes as claimed in the Application. The time gap with respect to D1 and D3 is even larger since both D1 and D3 were published before D2. In addition, the High Court noted that the corresponding patent applications had been granted in other jurisdictions, such as, USA, Japan, South Korea and China, which also establishes the inventive merit of the claimed invention. Accordingly, as there was a technical advancement in the invention of the Application over the cited documents, the High Court concluded that the invention was inventive over D1-D3 and allowed the appeal, thus allowing the patent to mature to a grant.
Conclusion
The High Court’s decision in this matter has established that simplicity in the inventive concept of an invention cannot be the sole basis for rejecting a patent application. Additionally, the time that has passed between the publication of the cited documents and the filing of a patent application is also an important factor to be considered while analysing the inventive step of an invention. At the time of examining the Application itself, if the Controller had taken these facts into account, the case could have proceeded to a grant much earlier, thus saving the time and resources spent by the Appellant in pursuing the appeal. Deficiencies in analysing the inventive step correctly by the Controller, more often than not, results in refusal of patent applications, thereby forcing patent applicants to file appeals. This is despite the fact that the corresponding applications in other jurisdictions have been granted. In order to avoid such unfavourable circumstances, an improved approach would be for Controllers and Examiners to judiciously follow the guidelines and assess the inventiveness of an invention considering all the important factors.
[The authors are Senior Patent Analyst and Principal Associate respectively, in IPR practice at Lakshmikumaran & Sridharan, New Delhi]
[1] KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007); https://supreme.justia.com/cases/federal/us/550/398/
[2] F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del); https://indiankanoon.org/doc/131401110/
[3] Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); https://supreme.justia.com/cases/federal/us/383/1/
[4] Bristol-Myers Squibb Holdings Ireland Unlimited Company &Ors. v. BDR Pharmaceuticals International Pvt. Ltd. &Anr.; CS(COMM) 27/2020
[5] Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59; https://vlex.co.uk/vid/windsurfing-international-inc-v-792781809
[6] Pozzoli Spa v. BDMO SA, [2006] EWHC 1398 (Ch); https://www.casemine.com/judgement/uk/5a8ff74860d03e7f57eaad1e
[7] Agriboard International LLC. v. Deputy Controller of Patents & Designs [C.A.(COMM.IPD-PAT) 4/2022 dated 31st March, 2022]; https://indiankanoon.org/doc/126889519/
[8] Actavis v. ICOS, [2019] UKSC 15; https://www.supremecourt.uk/cases/uksc-2017-0214.html
[9] Vickers v. Siddell (1890) 7 R.P.C. 292; https://academic.oup.com/rpc/article/7/33/292/1596735
[10] Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd, (1929) 46 R.P.C. 23; https://www.casemine.com/judgement/in/56b4961c607dba348f016b84
[11] Brugger v. Medic-Aid Ltd, [1996] R.P.C. 635; https://academic.oup.com/rpc/article-abstract/113/19/635/1610508
