Patents Act, 1970 and "Inventive Step" : High Court Explains the Scope
Several Judgments were pronounced by Hon'ble High Court last year.
Patents Act, 1970 says that “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. Sec. 2(j) of the Act, 1970 says that “invention” means a new product or process involving an inventive step and capable of industrial application. S.11B of the Patents Act, 1970 deals with certain conditions for examination of application of a patent. Sec. 53 of the Act provides for a term of 20 years from date of filing application for patent.
In Agriboard International LLC v Deputy Controller of Patents and Designs [2022] GCtR 1883 (Delhi), it was held that while rejecting an invention for lack of inventive step, the Controller has to consider 3 elements-
• the invention disclosed in the prior art,
• the invention disclosed in the application under consideration, and
• the manner in which subject invention would be obvious to a person skilled in the art.
It was held in Agriboard (supra) that "without a discussion on these three elements, arriving at a bare conclusion that the subject invention is lacking inventive step would not be permissible, unless it is a case where the same is absolutely clear. Controller has to analyse as to what is the existing knowledge and how the person skilled in the art would move from the existing knowledge to the subject invention, captured in the application under consideration. Without such an analysis, the rejection of the patent application under Section 2(1)(ja) of the Act would be contrary to the provision itself."
Written by
Vishal
Delhi
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