In the realm of patents, not every idea qualifies for protection. Alongside novelty and industrial applicability, inventive step—or non-obviousness—stands as one of the core requirements for patentability. While novelty ensures that the invention is new, the inventive step ensures that the innovation is not an obvious improvement to someone skilled in the field. This principle prevents the granting of patents for trivial advancements, promoting meaningful innovation instead of minor tweaks to existing ideas.

In India, the concept of inventive step is codified under the Indian Patents Act, 1970. It plays a pivotal role in balancing the rights of inventors with the public’s interest in accessing meaningful and transformative technologies.

 

What Is an Inventive Step/Non-Obviousness?

An inventive step—also referred to as non-obviousness—is a critical criterion for patentability. It ensures that an invention is not just novel (new) but also represents a significant and non-obvious advancement over existing knowledge or prior art in the relevant technical field. This requirement prevents trivial modifications or incremental improvements from being granted patent protection, thereby reserving patents for truly innovative and groundbreaking ideas.

Definition Under Indian Patent Law

The concept of the inventive step is defined under Section 2(1)(ja) of the Indian Patents Act, 1970, as follows:

“A feature of an invention that involves a technical advance as compared to the existing knowledge or has economic significance or both, and that makes the invention not obvious to a person skilled in the art.”

This statutory definition emphasizes two primary aspects:

1. Technical Advancement: The invention must demonstrate a clear improvement in technology when compared to prior art.
2. Economic Significance: Alternatively, the invention must provide substantial economic value.
3. Non-Obviousness: The invention should not be apparent to a person skilled in the field.

 

Breaking Down the Inventive Step

1. Novelty vs. Inventive Step
   While novelty requires an invention to be new, an inventive step ensures it goes beyond being a mere discovery or small change. For example:
   • Novelty might involve creating a faster smartphone.
   • Inventive step would involve a fundamentally new technology enabling that speed, such as a breakthrough in processing chips.
2. Technical Advancement
   The invention must solve a technical problem in a way that is neither routine nor obvious. For example, an energy-efficient engine that reduces fuel consumption using an entirely new mechanism could qualify.
3. Economic Significance
   Economic significance alone can justify an inventive step if it adds substantial commercial value. For instance, a new manufacturing process that drastically reduces production costs could meet this criterion.
4. Obviousness to a Skilled Person
   A hypothetical “person skilled in the art” is used to determine non-obviousness. This imaginary individual:
   • Possesses ordinary knowledge in the field.
   • Uses common technical methods.
   • Is aware of the current state of the art.
     If this person would find the invention an expected or logical step, it fails the inventive step test.

 

Examples of Inventive Steps

1. Pharmaceutical Inventions
   A drug formulation offering better absorption and fewer side effects due to a novel method of delivery may involve an inventive step.
2. Mechanical Innovations
   A new type of gear system that enhances the durability of vehicles by reducing friction significantly.
3. Software patents
   An algorithm that optimizes resource allocation in cloud computing through a previously unexplored method.

 

Tests for Determining Inventive Step

In India, the Patent Office and courts apply established tests to assess inventive steps, including:

1. Problem-Solution Approach
   • Identify the problem the invention aims to solve.
   • Analyze prior art to determine if it addresses the problem.
   • Evaluate whether the invention provides a novel solution that is non-obvious.
2. Could-Would Approach
   This test examines whether a person skilled in the art could have combined prior art to arrive at the invention and whether they would have done so without inventive input.
3. Teaching-Suggestion-Motivation (TSM) Test
   Checks if prior art provides enough teaching, suggestion, or motivation to lead to the invention.

 

Significance of the Inventive Step in Patent Law

The inventive step serves as a safeguard against granting monopolies for trivial modifications. It ensures that the patent system rewards true ingenuity and discourages minor, incremental changes.

1. Fostering Innovation

Inventive step encourages inventors to push the boundaries of what is possible. Without it, the patent system might become saturated with minor variations, stifling meaningful advancements.

2. Preventing Abuse of the Patent System

By requiring non-obviousness, the law ensures that patents are granted only for transformative innovations. This prevents patent holders from blocking competitors with minor, obvious tweaks to existing technologies.

3. Balancing Public and Private Interests

The inventive step protects the public from unnecessary monopolies. If minor changes could be patented, it would limit public access to existing ideas and hinder incremental innovation.

 

Legal Framework Governing Inventive Step in India

The inventive step is legally codified in the Indian Patents Act, 1970, with guidance provided by judicial interpretations and patent office practices.

1. Statutory Definition

Under Section 2(1)(ja), an inventive step involves a technical advancement or an economic significance that is not obvious to a skilled person.

3. Guidelines for Examination of Patent Applications

The Patent Office Manual provides a structured approach to assessing inventive steps, including:

• Identification of prior art.
• Determination of differences between the invention and prior art.
• Assessment of whether the differences would be obvious.

 

Role of Indian Patent Office (IPO) in Evaluating Inventive Step

The Indian Patent Office plays a key role in assessing whether an invention meets the inventive step criterion during the patent examination process. This evaluation involves the following steps:

(a) Review of Prior Art

The IPO conducts a thorough prior art search to determine whether the invention is already known. The examiner considers:

• Patent databases.
• Published scientific literature.
• Publicly available knowledge.

(b) Analysis of Non-Obviousness

The examiner evaluates whether the invention is a predictable or expected outcome for a person skilled in the art. If the invention lacks technical ingenuity, it may fail the inventive step requirement.

(c) Guidelines for Examination of Patents

The IPO has issued detailed guidelines for examiners to assess inventive steps, which include:

• Identifying the closest prior art.
• Determining the distinguishing features of the claimed invention.
• Assessing the technical contribution made by the distinguishing features.

 

Key Tests for Determining Inventive Step

The legal framework provides certain standardized tests to assess inventive steps.

(a) Problem-Solution Approach

• Identify the technical problem addressed by the invention.
• Evaluate whether the invention provides a solution beyond the prior art.

(b) Could-Would Test

This test checks whether a skilled person could have arrived at the invention and, if so, whether they would have done so without undue effort.

(c) Teaching-Suggestion-Motivation (TSM) Test

Used in cases of obviousness, this test examines whether prior art provides any teaching, suggestion, or motivation for the claimed invention.

 

Challenges in Establishing an Inventive Step in India

While the inventive step is essential for meaningful innovation, meeting this requirement can be challenging:

1. Subjectivity in Assessment

The test for obviousness often involves subjective judgment, leading to inconsistencies in patent office decisions.

2. Lack of Skilled Patent Examiners

Patent examiners require technical expertise in diverse fields. A shortage of skilled examiners can affect the quality of inventive step evaluations.

3. Complex Nature of Prior Art

With the rapid growth of knowledge, identifying relevant prior art and assessing its impact on obviousness has become increasingly complex.

4. Harmonization with Global Standards

India’s inventive step criteria must align with international patent systems, such as the TRIPS Agreement, while addressing domestic innovation needs.

 

Benefits of the Inventive Step Requirement

Despite the challenges, the inventive step criterion offers several benefits:

1. Ensuring High-Quality Patents

By filtering out trivial advancements, the inventive step ensures that patents protect only genuine innovations.

2. Promoting R&D Investment

A robust inventive step criterion incentivizes businesses to invest in meaningful research rather than minor modifications.

3. Enhancing Market Competition

Restricting patents for obvious improvements prevents market monopolization and encourages healthy competition.

 

Conclusion

The inventive step or non-obviousness requirement lies at the heart of patent law in India. It ensures that the patent system rewards genuine creativity and prevents monopolization of minor improvements. While inventors face challenges in proving inventive steps, the criterion is essential for fostering innovation, maintaining high patent quality, and balancing public and private interests.

By understanding the importance of non-obviousness, inventors can better navigate the patent process and contribute to technological progress that benefits society.

 

FAQs

1. Why is the inventive step critical for patentability in India?

The inventive step ensures that patents are granted only for significant technological advancements, fostering genuine innovation and preventing monopolization of minor modifications.

2. How does the Indian Patent Office assess the inventive step?

The office evaluates inventive steps using the problem-solution approach, analyzing prior art, differences, and whether the invention would be obvious to a skilled person.

3. Can economic significance alone establish an inventive step?

No, economic significance must be coupled with a technical advancement that is not obvious to a skilled person.

4. How does the inventive step align with international patent standards?

India’s inventive step criteria are aligned with global standards, including the TRIPS Agreement, to ensure consistency in international patents filings.

5. What role does prior art play in assessing inventive steps?

Prior art is used to determine whether the invention involves a non-obvious improvement over existing knowledge.

6. How does the “person skilled in the art” standard influence the assessment of inventive steps in India?

The “person skilled in the art” standard is a hypothetical benchmark used to determine whether an invention is obvious. This person is assumed to have average technical knowledge in the relevant field but lacks inventive ability. If the invention is obvious to such a person, it fails the inventive step requirement.

7. Can incremental innovations qualify for an inventive step under Indian patent law?

Yes, incremental innovations can qualify if they demonstrate a technical advance, solve a long-standing problem, or have economic significance. However, such advancements must not be obvious or trivial improvements over the prior art.

8. 8. What happens if an invention fails the inventive step requirement?

If an invention fails the inventive step requirement, the patent application will be rejected by the Indian Patent Office. The applicant may file an appeal before the Intellectual Property Appellate Board (IPAB) or challenge the decision in a court of law.