CHAPTER I

INTRODUCTION TO THE TOPIC

INTRODUCTION
A patent is a statutory right granted by the government for a fixed period of time to an
inventor or his assignee who has invented a new useful product or process in exchange for a
full disclosure of an invention.
The basic obligation in the area of patents is that, invention in all branches of technology
whether products or processes shall be patentable if they meet the three patentability tests of
being new involving an inventive step/Non-obviousness and being capable of industrial
application. However, it must not fall into the categories of non-patentable inventions.
Non-obviousness or the inventive step reflect a similar general patentability requirement
present in most patent laws, according to which an invention should be sufficiently inventive
i.e., non-obvious in order to be patented. According to the Indian Patent Act '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.
"Non-obviousness" is the term used in US patent law to describe one of the requirements that
an invention must meet to qualify for patentability, codified in 35 U.S.C. 103. One of the
main requirements of patentability is that the invention being patented is not obvious,
meaning that a "person having ordinary skill in the art" would not know how to solve the
problem at which the invention is directed by using exactly the same mechanism.

OBJECTIVE OF THE STUDY

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The research project has been carried out with the following objectives:

The basic objective behind carrying out this research project is to understand the
concept of test of non-obviousness as a mandatory test for the grant of patent in some

specified field.
Also to arrive at decisive conclusion with regards to the test of non-obviousness in
India compared to that prevalent in U.S.A.

HYPOTHESIS
In order to conduct a research work, some important hypothesis are to be formulated. The
focal points and assumptions are normally available through the formulation of hypothesis.
The major hypothesis developed on the basis of study are as follows:

The combination of previously known elements can be considered obvious.

The impact of assessment of non obviousness would be higher in the field of
biotechnology as the field is filled with uncertainties.

RESEARCH PROBLEM

Whether or not the Graham Factor really helps in determining the non-obviousness
of an invention in United State of America?

Researcher has taken up the following problem because in past few years there has been a
huge controversy with regards to the judgments of the U.S Supreme Court with respect to the
graham factor.

Whether or not after a patent application has been filed, disclosure of details of the
invention would no longer be considered to be novel in a patenting sense.

Researcher came up with the above stated problem so as to find out that in what way the
invention details should be disclosed so as not to fail the test of novelty.

LITERATURE REVIEW

Books Referred
1. Dr. Sreenivasulu, N.S, Intellectual Property Rights.

This book helped researcher to understand the concept of non obviousness as a

mandate for the grant of patent in India.

2. Baxter, J W et. Al, World Patent Law and Practice, Vol. II- New York: Lexis
Nexis, 2002.

This book particularly states and explains the general practice for the grant of
patent in U.S. Researcher sought help of this book to deal specifically with the
provisions related to grant of patent in United States of America.

This book also explains the graham test which is prevalent in United States
of America as an assessment test for non obviousness.

SCOPE
The scope of the present research is limited to:
Laws related to novelty in two countries i.e. India, and U.S.
In this research project the researcher attempts to determine the advantages of the mandatory
test of novelty in three different countries. Looking at the vastness of the project the
researcher has confined the scope of the study to analyze the topic. The researcher has tried to
cover the aspects connected with the said topic and analyze them in an elaborative manner.
RESEARCH METHODOLOGY

The quality and value of research depends upon the proper and particular methodology
adopted for the completion of research work. Looking at the vastness of the research topic
doctrinal Legal research methodology has been adopted. The researcher has adopted
both the primary and secondary sources.

CHAPTER II
TEST OF NON- OBVIOUSNESS IN USA

2.1 DEFINITION
"In US patent law term Non-obviousness used for inventive step and codified under 35
U.S.C. 103. Thereby implying that a "person having ordinary skill in the art" would not
know how to solve the problem at which the invention is directed by using exactly the same
mechanism.
So now it can be said that Inventive step is one which makes the invention non-obvious to
a person skilled in the art. In other words, if the invention is obvious to the person skilled in
the art, it cannot be said to involve an inventive step. After the Amendment in 2005, the
definition of inventive step has been enlarged to include economic significance of the
invention as well.
2.2 DOCTRINE OF FLASH OF GENIUS
It was a test for patentability used by the United States Federal Courts for over a decade. The
doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. 1 in this case
it was held that the inventive act had to come into the mind of an inventor in a flash of
genius" and not as a result of tinkering. "The new device, however useful it may be, must
reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not
established its right to a private grant on the public domain.2
1 (314 U.S. 84 (1941))
2 (Id. at 91)
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This test lasted more than a decade, was most likely an appealing and easy standard for
judges.
This test was eventually rejected by the patent statute's. Patentability shall not be negative by
the manner in which the invention was made.
Graham et al. v. John Deere Co. of Kansas City et al.3
In this case the test of obviousness and non-obviousness in the United States were determined
outlined by the Supreme Court and are commonly referred to as the "Graham factors". The
court held that obviousness should be determined by following factors:
1.
2.
3.
4.

The scope and content of the prior art;

The level of ordinary skill in the art;
The differences between the claimed invention and the prior art; and
Objective evidence of non-obviousness.

But this test was converted into a synergism of the existing product or at least produces
synergistic effect in the Burland v. Trippe Manufacturing Co.4 but the Supreme Court
affirmed the Graham test. Graham test is still valid today and adopted in India also.
2.3 Teaching-suggestion-motivation (TSM) test
In the case of Winner Int'l Royalty Corp. v. Wang, 5 it was held that there must be a
suggestion or teaching in the prior art to combine elements shown in the prior art in order
to find a patent obvious. Thus, in general the critical inquiry is whether there is something
in the prior art to suggest the desirability, and thus the obvious nature, of the combination
of previously known elements.
This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM)
test and serves to prevent against hindsight bias.
The TSM test requires that some suggestion or motivation exists to combine known
elements to form a claimed invention. The Federal circuit has made clear that the
3 383 U.S. 1 (1966)
4 43 F. 2d 588 (7th Cir. 1976).
5 202 F.3d. 1340, 1348 (Fed. Cir., 2000)
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motivation may be implicit, and may be provided for example by an advantage resulting
from the modification. In other words, an explicit prior art teaching or suggestion to make
a particular modification is sufficient, but not required for a finding of obviousness.
The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous
decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and
held that it "analyzed the issue in a narrow, rigid manner inconsistent with 103 and our
precedents," referring to the Federal Circuit's application of the TSM test. The court held
that, while the ideas behind the TSM test and the Graham analysis were not necessarily
inconsistent, the true test of non-obviousness is the Graham analysis.
2.4 KSR International Co. v. Teleflex Inc6
The US Supreme Court in the famous case of KSR International Co. v. Teleflex Inc., et al
analyzed the test of obviousness and held that the fact that a combination was obvious to try
might show that it was obvious under 103.
In determining whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid under 103 of US
Patent law. One of the ways in which a patents subject matter can be proved obvious is by
noting that there existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patents claims. The proper question to have asked was
whether a pedal designer of ordinary skill, facing the wide range of needs created by
developments in the field of endeavor, would have seen a benefit to upgrading [a prior art
patent] with a sensor.

6 127 S. Ct. 1727 (2007),

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2.4.1 Principles Evolved in the KSR Judgment

1.This test is not to be construed as a straightforward formula for testing the non-obviousness
of a patent, particularly combination patents.
2.

The question of obviousness has to be addressed irrespective of the objective which

the patent ostensibly seeks to achieve.

3.

Strong evidence from which one may prove directly or infer obviousness has to be put

in proper perspective considering the course which technology was likely to take. However,
mere cursory statements made in the name of expert testimonies cannot be relied upon.
Expressed differently, an obvious to try standard could be used to prove obviousness.

CHAPTER III
TEST OF NON- OBVIOUSNESS IN INDIA

3.1 DEFINITION
Non-Obviousness measures the technical accomplishment reflected in an invention. It
attempts to measure an even more abstract quality than novelty and utility.
In order to ascertain whether an invention is an adequate technical advancement to merit the
award of a patent. The objective of patent system is advancement of science. Ascertaining
what was the state of the art before the relevant date of the complete specification filed
pursuant to an application for a patent, and ascertaining whether the alleged inventive step
would have been obvious to a person skilled in the art.7
3.2 State of Prior Art
For an invention to be judged as novel, the disclosed information should not be available in
the prior art. This means that there should not be any prior disclosure of any information
contained in the application for patent anywhere in the public domain, either written or in any
other form, or in any language before the date on which the application is first filed i.e. the
priority date. The term prior art has not been defined under the Indian Patents Act, it shall
be determined by the provisions of section 13 read with the provisions of sections 29 to 34 of
the Act.
7 Molnlycke A.B. v Procter and Gamble 1994 RPC 49; Hoechst Celanese Corp. v B.P Chemicals
1997 FSR 547, 562.
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The following has been indicated as prior art8:

(a) Anticipation by publication before the date of the filing of the application in any of
the specification filed in pursuance of application for patent in India on or after the 1st
day of January 1912;
(b) Anticipation by publication made before the date of filing of the application in any of
the documents in any country;
(c) Claim in any claim of any other complete specification filed in India which is filed
before the application but published after said application;
(d) Anticipation having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere.
It is clear that in order for an invention to be anticipated by virtue of a patent, the
patent must have been granted in India alone. 9 A patent granted in any other country
would not constitute prior art for the purposes of the Act. 10

If the patent is

anticipated by publication, it is irrelevant whether the publication occurred in India or

elsewhere.
An invention is not considered new if the claimed invention is publicly known or publicly
used in India before the priority date.11
8 These provisions may be found in Chapter IV of the Act containing provisions for publication and
examination of applications for patent and Chapter V of the Act dealing with opposition to grant of a
patent.
9 S. 13(1); s. 25(1)(b)(i);s.25(1)(c);s.27(a);s.64(1)(a) of the Act
10 A patent granted in US would not be a bar to a patent in India for the same invention.
11 S. 64(1)(e)
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In the case of Bishwanath Prasads Supreme Court observed that prior public knowledge of
the alleged invention would disqualify the grant of a patent. Publications concerning the
invention whether through word of mouth or through books or media would, therefore nullify
any subsequent attempt to secure a patent.

3.3 Obviousness to a person skilled in the art:

A skilled person would be a person who has experience of the field in question and he may
be one who have available assistants who would carry out tests.12
To pass the test of obviousness, the prior art must be of such nature as to inform the skilled
person as to how the invention derived from the prior art is to be performed.
In determining whether an invention involves an inventive step and is non-obvious, the
supervening policy of patent law viz. to reward and encourage invention without inhibiting
improvements of existing technologies by others must be kept in mind.
A structured approach to determine obviousness consisting of four steps was expounded in
Windsurfing International v Tabur Marine13:
a. Identify the inventive concept in the suit
b. Keep in mind a normally skilled, but unimaginative person having common general
knowledge of the concerned art as at the priority date will be the date from which the
objector to the patent would allege inventive step was obvious
c. Through the spectacles of the aforesaid skilled person identify differences, if any,
between the matter cited as being known or used and the alleged invention;

12 PLG Research v Ardon 1993 FSR 197, 207

13 Windsurfing International v Tabur Marine 1985 RPC 59
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d. Finally, without considering the alleged invention, consider whether the differences
would see to the aforesaid skilled person such as leading obviously to the alleged
invention or that a degree of invention would be necessary to obtain the invention.

In Bishwanth Prasads case, the apex court suggested three alternative conceptions of the
same:
a. Whether the alleged invention lies so much out of the track of what was known before
as not natural to suggest itself to a person thinking on the subject, it must not be the
obvious or natural suggestion of what was previously known;
b. Had the document been placed in the hands of a competent draftsman, or engineer, (as
distinguished from a mere artisan), endowed with the common general knowledge at
the priority date, who was faced with the problem solved by the patentee, but
without knowledge of the patented invention, would he have said, this gives me what
I want?
c. Was it for practical purposes obvious to a skilled worker n the field concerned, in the
state of knowledge existing at the date of the patent, to find in literature then available
to him; that he would or should make the invention the subject of the claim
concerned.
The Supreme Court of India laid down the importance of assessing inventive step in
this case, as follows:
It is important that in order to be patentable an improvement on something known
before or a combination of different matters already known, should be something
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more than a mere workshop improvement; and must independently satisfy the test of
invention or an 'inventive step'. To be patentable the improvement or the combination
must produce a new result, or a new article or a better or cheaper article than before.
The combination of old known integers may be so combined that by their working
interrelation they produce a new process or improved result. Mere collection of more
than one integers or things, not involving the exercise of any inventive faculty, does
not qualify for the grant of a patent.

CHAPTER IV
CONCLUSION
The Patent Laws in India which were originally enacted in 1970, needs to be further amended
as far as the field of Medicines is concerned because the Patent system in India does not
affect the rich and the elite class of people but it does affect the availability and affordability
of medicines for the poor people who in the developing country like India are caught in a
vicious circle wherein the Poor health leads to poverty, and poverty in its turn breeds poor
health.
Therefore ,the Patent Act, 1970 in India dealing with the Patentability criteria should be
modified to such an extent so as to make them as stringent as possible while granting patents
to inventions in field of medicines, so that the concern for the poor and the critical health
situation in India should be taken care of .For example ,an invention which can cure a deadly
disease like cancer shall not be easily allowed to be patented under the Patent Laws in India
as granting of Patent to such an invention will not serve the general purpose of curing Poor
people who constitutes majority of our population, as the inventor of such patented medicine
will be having the exclusive rights to make and sell that medicines at a discretionary price
which can only be afforded by the rich and elite class of people.
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BIBLIOGRAPHY

Books Referred:
Dr. Sreenivasulu, N.S, Intellectual Property Rights.
Baxter, J W et. Al, World Patent Law and Practice, Vol. II- New York: Lexis Nexis,
2002.

CASES REFERRED:

Cuno Engineering Corp. v. Automatic Devices Corp. 314 U.S. 84 (1941))

Ryko Manufacturing v. Nu-Star, Inc. 950 F.2d 714, 718 (Fed. Cir. 1991)).
Graham et al. v. John Deere Co. of Kansas City et al. 383 U.S. 1 (1966)
Burland v. Trippe Manufacturing Co. 43 F. 2d 588 (7th Cir. 1976).
Winner Int'l Royalty Corp. v. Wang 202 F.3d. 1340, 1348 (Fed. Cir., 2000)
KSR International Co. v. Teleflex Inc 127 S. Ct. 1727 (2007)
Windsurfing International v Tabur Marine 1985 RPC 59

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