Answer By law4u team
What is an Inventive Step in Patents? In the context of patent law, the inventive step is one of the fundamental requirements for an invention to be granted a patent. The notion is designed to ensure that patents are granted only for genuine innovations, and not for trivial or obvious changes to existing technologies. The inventive step ensures that the invention is not obvious to a person skilled in the relevant field, based on the prior art (existing knowledge, publications, patents, etc.) that is available at the time of the invention. In India, the concept of inventive step is embedded in the Patents Act, 1970, as amended by subsequent legislation. It plays a vital role in determining whether a patent should be granted or refused. Without an inventive step, even a novel invention may not qualify for patent protection. Legal Definition and Framework of Inventive Step In India, the definition of an inventive step is provided under Section 2(1)(ja) of the Patents Act, 1970, which states that an invention involves an inventive step if it is: Not obvious to a person skilled in the relevant field of technology, having regard to the state of the art (i.e., all the knowledge and information that existed before the invention). The Role of Inventive Step in Patentability For an invention to be patentable, it must meet three primary criteria: 1. Novelty (the invention must be new and not have been disclosed in prior art), 2. Inventive Step (the invention must not be obvious to a person skilled in the art), and 3. Industrial Applicability (the invention must be capable of being made or used in some kind of industry). While novelty ensures that the invention is not already in the public domain, the inventive step addresses whether the invention goes beyond what would be obvious to a skilled person based on prior knowledge. In other words, an invention that is merely an obvious improvement upon existing solutions would not be granted a patent, even if it’s technically new. Assessing the Inventive Step The assessment of an inventive step involves a detailed examination of the invention’s technical merits, its relationship to existing prior art, and whether the claimed solution is non-obvious in light of this prior art. Patent examiners use various guidelines to evaluate the inventive step, including: 1. Problem-Solution Approach: This is the most commonly used approach for assessing inventive step. The patent examiner identifies the closest prior art (the most relevant existing technology or solution). Then, they assess the problem that the invention aims to solve and determine if the solution is obvious in light of the prior art. If the solution is an obvious step for someone skilled in the field, it will be considered lacking in inventive step. 2. Non-Obviousness to a Person Skilled in the Art: The law requires that the invention must not be obvious to a person skilled in the art (a person having ordinary skills and knowledge in the specific technical field). This person is presumed to have access to all prior art but is not expected to have any special creativity or insight. Therefore, the invention must involve something beyond the logical and expected steps that such a person would take. 3. Objective Consideration of Prior Art: The patent office examines the invention in light of prior art and considers whether the invention was predictable or easily derived from existing solutions. The examiner may also consider whether the invention addresses any shortcomings or problems in existing technologies, and if it does, whether the solution is non-obvious. 4. Combination of Prior Art: Often, inventive step is assessed based on whether combining two or more pieces of prior art would have led the skilled person to the invention. If such a combination seems obvious, the inventive step requirement may not be met. Examples of Inventions with Inventive Step To clarify the concept, let's look at examples where the inventive step would be present: Example 1: Chemical Composition for Pharmaceuticals Imagine a pharmaceutical company invents a new drug for treating a specific disease. While the drug’s active ingredient is novel (novelty), it’s also important to check whether the formulation or delivery method shows an inventive step. If the drug’s formulation or method of delivery is an unexpected and non-obvious improvement over existing drugs, then it may satisfy the inventive step requirement. However, if it merely combines two known methods in a way that would be obvious to someone skilled in the field, it would lack an inventive step. Example 2: Smartphone Technology Consider an inventor who develops a new smartphone with an improved screen resolution. If the enhancement is based on existing technology in a way that would be obvious to a person skilled in the field, then the inventive step requirement would not be met. However, if the new screen uses an entirely different technology that results in significant energy savings or durability improvements, this could involve an inventive step. Example 3: Mechanical Engineering In mechanical engineering, suppose an inventor designs a new type of engine component that improves fuel efficiency. If the component uses existing materials and manufacturing methods, and it simply improves the efficiency in an obvious manner, it may fail to satisfy the inventive step. However, if the component uses an entirely new material or a novel manufacturing technique that results in a unique advantage, it may qualify. Important Principles for Inventive Step 1. Non-Obviousness is Relative: The concept of non-obviousness is not absolute but relative to the state of the art at the time of the invention. What may seem obvious today might not have been obvious at the time the invention was made. 2. Commercial Success: While commercial success alone does not establish inventive step, it may serve as secondary evidence. If the invention has achieved significant commercial success, it can be an indication that the invention is non-obvious, especially if it addresses a long-standing problem in the market. 3. Level of Ordinary Skill: When assessing inventive step, it is assumed that the person skilled in the art has average knowledge and would approach the problem logically and systematically. Therefore, the invention must be beyond what they would find as a simple or routine solution. 4. Teaching, Suggestion, or Motivation (TSM Test): The Teaching-Suggestion-Motivation (TSM) test is used to determine whether a skilled person would have been motivated to combine prior art references in a way that would lead to the invention. If the prior art does not provide a clear suggestion to combine certain elements in a specific way, the invention may involve an inventive step. Challenges with Inventive Step Assessing inventive step can be highly complex, and several challenges may arise during this evaluation: Subjectivity: The determination of whether an invention is obvious or non-obvious often involves subjective judgment by patent examiners. Different examiners may come to different conclusions based on their interpretations of the prior art and the problem being solved. Rapid Technological Advancements: In rapidly evolving fields like software, biotechnology, and electronics, the line between obvious and non-obvious can be especially blurry. What was once considered an inventive step may quickly become obvious due to new developments in the field. Patent Litigation: In cases of patent infringement disputes, the issue of inventive step can become a key point of contention. Courts may need to assess whether the alleged invention was non-obvious in light of the prior art. Conclusion In conclusion, the inventive step is a critical criterion in patent law that ensures patents are granted for genuine innovations that provide meaningful advancements over existing technologies. It serves as a safeguard against granting patents for mere modifications of known solutions or obvious ideas. Inventive step is assessed by examining whether the invention would have been obvious to a person skilled in the relevant field, given the existing knowledge at the time. As such, it plays a significant role in maintaining the integrity and value of the patent system. By ensuring that patents are granted only for non-obvious innovations, the concept of inventive step encourages genuine scientific progress and fosters a competitive and innovative environment.
