Law Intellectual Property

Concepts of Invention, Novelty, Inventive Step and

Industrial Application
Development Team
Role Name Affiliation

Principal Investigator Professor (Dr.) Ranbir Singh Vice Chancellor, National

Law University, Delhi
Paper Coordinator Mr. Yogesh Pai Assistant Professor of
Law, National Law
University, Delhi
Content Writer (CW) Aditya Gupta Advocate, Delhi High
Court
Content Reviewer (CR) Prof. Prabuddha Ganguli MHRD Chair Professor,
Tezpur University

Module Detail
Subject name Law

Paper name Intellectual Property

Module name/ Title Concept of Invention, Novelty, Inventive Step and Industrial
Application

Module Id Law/IP/#09

Pre- requisites Introduction to Intellectual Property; Justifications; legal

principles of property; economics of patents
Objectives To understand the concept of patents.
To study the principles of novelty and non-obviousness
governing patent law.
To understand the Principles of patent law.
Key words Patents, inventive step, invention, novelty, non-obviousness,
hindsight bias, teaching away, Intellectual Property, industrial
application.
Introduction
Patent is granted for an “invention” – this is a universally accepted principle of patent
law1. The patent specification describes the invention 2and if the application is granted
by the Patent Office, the patentee is entitled to exclusive rights over the “invention” 3.
As you may see, in many ways, the concept of invention forms the foundation of
patent law. The sections below elaborate on this concept.
Section 2(j) of the Patents Act, 1970 defines the term invention in the following
terms:
“invention” means a new product or process involving an inventive step and
capable of industrial application”
For ease of understanding, let’s break down this definition into its constituent parts:

● The invention must be a “product” or a “process”.

● In order to qualify as an invention, a product or process:
o Must be “new”; and
o Must involve an “inventive step”; and
o Must be “capable of industrial application”

1
See Article 27.1 of the Agreement on Trade Related Aspects of Intellectual Property (“TRIPS
Agreement”), which states “Subject to the provisions of paragraphs 2 and 3, patents shall be available
for any inventions...”
2
See Section 10 of the Patents Act, 1970 which states “
3
See Section 48 of the Patents Act, 1970 which states “

2
 Learning Outcome:
To understand the need/ context of Patent Laws
To examine the concept of Invention and Novelty
To comprehensively study the underpinnings of obviousness
analysis
To study in detail the concept of Hindsight Bias
To understand the concept of Teaching Away
To explain the need for industrial applicability of an invention
To understand the requirements of disclosure under the Indian
Patent law

It is critical to note that the above mentioned requirements are conjunctive i.e. all the
above requirements need to be satisfied for a product or process to be considered an
invention. While we will elaborate further on the concepts of “new”, “inventive step”
and “industrial application” in later sections of this module, it may already be evident
to you that these requirements conjunctively create a fairly high threshold (as
compared to copyright and trademark law) for a patentee to clear. Adoption of such a
threshold is with good reason – the grant of a patent confers on the patentee exclusive
right that often enable the patentee to eliminate competition 4. Thus, the law seeks to
ensure that such a monopoly is granted with caution and only where the patentee is
able to show that the product or process is truly worthy of such a monopoly.

4
See Ibid.

3
Statutory Exclusions
Apart from Section 2(j) discussed above, Section 3 also provides guidance regarding
the scope of the concept of inventions. The Supreme Court in the now landmark case
of Novartis AG versus Union of India and Ors.5, categorized Section 3 of the Act into
two parts: The Supreme Court found that subsections such as (d) and (e) are
‘deeming’ provisions that “declare that certain things shall not be deemed to be
inventions”; other subsections of Section 3 such as (b) provide that even though
resulting from an invention, some things may not be granted a patent for “other
considerations”.

For now, we are only concerned with the first of two categories mentioned above i.e.
those subsections of Section 3 that declare that certain things shall be deemed not to
be inventions. Section 3 declares that certain things – new forms of known chemical
substances6, process for the medicinal, surgical, curative, prophylactic, diagnostic,
therapeutic or other treatment of human beings7, algorithms8, mathematical methods9,
business methods10, computer programmes per se11 etc. – will not be considered as
inventions even if they satisfy the requirements of Section 2(j). Thus, the statute
excludes certain categories of subject-matter from the concept of “invention” thereby
creating a list of products or processes that will not be considered as inventions and
will thus not be entitled to patent protection even if they are new, involve an inventive
step and are capable of industrial application.

Relationship between the concept of invention and statutory exclusions

The Supreme Court in the Novartis case clarified that Section 3 creates a “second tier
of qualifying standards” quite apart from those mentioned in Section 2(j). It may be
helpful to conceptualize the relationship between the two filters – the first filter
5
(2013) 6 SCC 1
6
Section 3(d) of the Patents Act, 1970
7
Section 3(i) of the Patents Act, 1970
8
Section 3(k) of the Patents Act, 1970
9
Section 3(k) of the Patents Act, 1970
10
Section 3(k) of the Patents Act, 1970
11
Section 3(k) of the Patents Act, 1970

4
comprises of the three requirements the patentee has to establish i.e. that the product
or process is new, has an inventive step and is capable of industrial application. The
second filter comprises of the statutory exclusions mentioned in Section 3. An
invention has to pass through both these filters to be eligible for grant of a patent.

When is an invention considered ‘new’?

The term ‘new’ is not defined by the Act. 12 While the Act defines the term “new
invention”, this definition is redundant since the term is not used anywhere else in the
Act. In these circumstances, one has to use the common law meaning of the term to
understand the meaning of the term new. A commonly used definition of “new”/
“novelty” is this – a claim is considered new if all the elements of the claim cannot be
found in a single prior art reference13. At this point, it is important for you to
understand the concept of prior art – prior art means everything made available to the
public by means of a written or oral description, by use, or in any other way, before
the priority date of the invention14. The most commonly used prior arts are written
documents – both previously published patents and other articles published in
journals. Now let’s again examine the definition of “new”. If there exists any single
document where all the elements of a claim can be found, the claim is said to lack
novelty.

Let’s take an example. An inventor felt that existing three – legged chairs were too
unstable and thus came up (for the first time) with a four – legged chair. A claim for a
four-legged chair can read as under:

“A device for resting comprising of a seating platform, four legs, a backrest and an
armrest.”

12
The Act does define the term ‘new invention’. Oddly, however, the term ‘new invention’ is not used
in the Act, thus rendering the definition redundant.
13
Glaverbel SA vs. Dave Rose and Ors.,2010 (43) PTC 630Farbewerke Hoechst
AktiengesellschaftVormals Meister Lucius &Bruning Corporation Vs. Unichem Laboratories and Ors.,
AIR 1969 Bombay 255
14
The term “state of the art” has been defined under Section 2(2) of the UK Patents Act, 1977

5
The elements of this patent are:

1. It is a device (a product patent) which must be used for resting.

2. It must have a seating platform.
3. It must have four legs.
4. It must have a backrest.
5. It must have an armrest.

Let’s say there is a prior patent that discloses a three-legged chair having a seating
platform, a backrest and an armrest. Even though all other elements of our four –
legged chair are known, since element ‘3’ described above is missing from the prior
art document, the claim on the four legged chair can be considered ‘new’. Now let’s
say another patent discloses a four – legged stool which has a seating platform and
four legs. Does this patent alone make our four – legged chair not ‘new’? The answer
is no. This is because elements ‘4’ and ‘5’ of the chair identified above are missing
from the four – legged stool. You may be wondering if one can combine the
disclosures made in the patent relating to the three – legged chair and the four-legged
stool to destroy the novelty of the four – legged stool. The law does not permit this
combination or ‘mosaicing’15. As mentioned above, to destroy novelty of a claim, all
the elements of the claim must be found in a single prior art reference and thus
combination of two prior art documents is not possible in the novelty context.
Remember that this analysis is only limited to ‘novelty’ and, as you will see, different
rules apply when we analyze whether a claim has an inventive step.

When is an invention said to have an “inventive step”?

While, as aforementioned, the statute does not define the term ‘new’ or ‘novelty’, it
does provide the following definition for the term inventive step under Section 2(ja):

15
Von Heyden versus Neustadt, (1928) 45 RPC 48; Glaverbel SA vs. Dave Rose and Ors., 2010 (43)
PTC 630

6
 “Inventive step” means a feature of an invention that involves technical
advancement 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;

The Supreme Court in the aforementioned Novartis case broke down Section 2(ja)
into its elements in the following way:

“It [The product] must come into being as a result of an invention which has
a feature that:

(a) Entails technical advancement over existing knowledge;

Or

(b) Has an economic significance

And

(c) Makes the invention not obvious to a person skilled in the art”

This question - what is “obvious” - has been the subject of a large part of patent
litigation and continues to be one of the most vexed questions in all of patent law.

Obviousness

A). Policy Underlying the Obviousness Analysis

7
The policy underlying the obviousness analysis is well illustrated by Lord
Hoffmann’s following words:

“The words ‘obvious’ and ‘inventive step’ involve questions of fact and
degree which must be answered in accordance with the general policy of the
Patents Act to reward and encourage inventors without inhibiting
improvements of existing technology by others. The question is therefore
whether in accordance with this policy the patent discloses something
sufficiently inventive to deserve the grant of a monopoly.”

The inventive step analysis thus lies at the heart of the debate on patentability. This
requirement is an important lever that countries use to define the level and kinds of
innovation that they wish to encourage, though this of course must be done within the
limits prescribed by the TRIPS Agreement.

B). Obvious from whose Point of View

The last few words of Section 2(ja) – “to a person skilled in the art” – introduce us to
another important concept of patent law. Whether or not a product or process has an
inventive step is to be adjudged from the point of view of a “person skilled in the art”.
In other jurisdictions such as the United States, the term used for the analogous
concept is ‘Person Having Ordinary Skill in the Art’ (in short also referred to as
‘PHOSITA’).

The person of ordinary skill is not inventive but a person with average, normal
skills16. The work expected from such a person is of a routine nature and nothing
extraordinary or out of the way. The person of ordinary skill is not expected to know
the solution to the problem or else the analysis would be on the basis of hindsight.
The person of ordinary skill in the art is conservative and does not take risks or go
against the established prejudices17.

16
General Tire & Rubber Co v Firestone Tyre& Rubber Co Ltd., [1972] RPC 457
17
Genentech/ Boehringer Manheim, T 0455/91

8
It is well settled that the more choices or decisions that the person of ordinary skill
will have to make in reaching the solution, the less obvious the said solution. The
greater the complexity and the more instructions there are on the path to the invention
the less obvious it is.

C). Obvious With Respect to What

There is another important expression in Section 2(ja) – “technical advance over

existing knowledge”. As explained above, mosaicing is not permissible while carrying
out a novelty analysis. Is it permissible while carrying out an inventive step analysis?
The answer is yes, provided that such a combination of prior art references would
have been carried out by an unimaginative man with no inventive capacity 18. Thus
while carrying out an obviousness analysis, the disclosures made in one prior art
document may be supplemented by disclosures in another prior art document if a
person skilled in the art would have thought it obvious to consult the latter after
referring to the former in light of the problem he had set out to solve. Such
combination is particularly likely where the disclosures made in one prior art
document lead the person skilled in the art to another prior art document – a good
example of this is where one document cites or cross – refers another document19.

D). The Test for Obviousness

It is safe to say that there does not exist one uniform approach to determining
obviousness and even in jurisdictions where one approach has been adopted, different
judges have applied the law differently. In India, the Supreme Court of India dealt
with this question expressly in Biswanath Prasad Radhey Shyam vs Hindustan Metal
Industries20 which is a three – judge bench decision of the Hon’ble Supreme Court.

18
Technograph versus Mills and Rockley, [1972] RPC 346 at p. 355
19
Pfizer Ltd.’s patent, 2001 FSR 16 at paragraphs 65 – 66.
20
(1979) 2 SCC 511

9
The Delhi High Court in the F. Hoffmann La Roche versus Cipla Ltd.21 Case adopted
the Supreme Court test and held as under:

“The ‘obviousness’ has to be strictly and objectively judged. For this

determination several forms of the question have been suggested. The one
suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is:
“Whether the alleged discovery lies so much out of the track of what was
known before as not naturally to suggest itself to a person thinking on the
subject, it must not be the obvious or natural suggestion of what was
previously known.”

26. Another test of whether a document is a publication which would negate

the existence of novelty or an "inventive step" is suggested, as under:

“Had the document been placed in the hands of a competent craftsman (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?" (Encyclopedia Britannica; ibid).
To put it in another form: “Was it for practical purposes obvious to a skilled
worker, in the field concerned, in the state of knowledge existing at the date of
the patent to be found in the literature then available to him, that he would or
should make the invention the subject of the claim concerned?””

As is evident from the tests formulated above, the test of obviousness is ultimately a
subjective one22 and involves value judgment23. This introduces a significant amount
of unpredictability in patent law and this, in my view, is the cause of a large part of
patent litigation.
21
2012 (52) PTC 1 (Del)
22
Kirsch Manufacturing Co. v. Gould Mersereau Co., 6 F.2d 793
23
Picard v. United Aircraft Corporation, 128 F.2d 632.

10
E). Hindsight Bias

An oft – talked about phenomenon in the obviousness context is hindsight bias.

Simply put, hindsight bias refers to the phenomenon in which inventions seem
obvious after the fact even though they would not have been obvious before they were
invented. It has been scientifically proven that once humans have learnt something, it
is difficult for them to ignore it. Once armed with the knowledge of the invention, it is
difficult for humans to retrace the forward looking steps that the inventor took and
they are more likely to simply piece together the teachings of the prior art to reach the
invention and then perceive the invention as obvious. In other words, when viewed
through the lens of hindsight, Courts are more biased to find an invention obvious.

As you can imagine, hindsight bias is quite unfair to patentees. Courts have thus
repeatedly cautioned against it. Courts have held that the person skilled in the art
should treat the invention as a “template” to piece together the teachings of the prior
art and then claim that the said prior art made the invention obvious 24. Similarly, in
the Ortho – McNeil case25, the court said that it is impermissible to simply retrace the
path of the inventor with hindsight and discount the number and complexity of the
alternatives that are faced by the person skilled in the art should he attempt to reach
the invention from the prior art.

In the European Community, the obviousness test is often referred to as the ‘could –
would’ test. According to this test, the point is not whether the skilled person could
have arrived at the invention by adapting or modifying the closest prior art, but
whether he would have done so because the prior art incited him to do so in the hope
of solving the objective technical problem or in expectation of some improvement or
advantage.26 This focus on the ‘would’ rather than the ‘could’ helps the Courts guard
against the hindsight bias.

24
In Re John R Fritch, 972 F.2d. 1260
25
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., No. 07-1223 (Fed. Cir. Mar. 31,
2008)
26
http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_5_3.htm

11
F). Teaching away

Patent law has long recognized the concept of “teaching away”. According to this
concept, if the prior art “teaches away” or prejudices the person of ordinary skill in
the art from embarking on the path chosen by the inventor, then the invention is non –
obvious. This concept is succinctly explained in the Pozzoli case 27 where the Court
held that:

“Patentability is justified because the prior idea which was thought not to work
must, as a piece of prior art, be taken as it would be understood by the person
skilled in the art. He will read it with the prejudice of such a person. So that
which forms part of the state of the art really consists of two things in
combination, the idea and the prejudice that it would not work or be impractical.
A patentee who contributes something new by showing that, contrary to the
mistaken prejudice, the idea will work or is practical has shown something new.
He has shown that an apparent “lion in the path” is merely a paper tiger. Then
his contribution is novel and non-obvious and he deserves his patent.”

G). Objective Indicia of Non - Obviousness

Another critical argument of the patentee is on factors which are the objective indicia
of non-obviousness as can be seen from paragraph 5.05 of Chisum on the Law of
Patents28, there is a natural pitfall in complying to their subjective tests of obviousness
and these can be overcome by applying objective indicia. As per the said authority:

“The legal conclusion as to whether a given product or process was obvious

at the time of invention to one of ordinary skill in the pertinent a0rt who had
knowledge of all relevant prior art is a path fraught with pitfalls, including
especially the inherent difficulty of making such a hypothetical judgment and
the tendency to use (even subconsciously) “hindsight” and the inventor’s own
work to determine obviousness. The adversary system fails to guide
27
Pozzoli SPA versus BDMO SA, [2007] FSR 37
28
Donald Chisum, Chisum on Patents: A Treatise on the Law of Patentability, Validity and
Infringement

12
 adequately the decision maker along the path; in infringement trials, the
opposing sides tend to offer conflicting expert testimony. Consequently, the
courts look to objective guideposts – what Judge Learned Hand in his many
incisive opinions on the subject called the “history of the art” for aid and
assistance”

The importance of such objective indicia of non – obviousness has long been
recognized by the United States Supreme Court in Graham v. John Deere’s
case29wherein the court stated that such objective indicia or ‘secondary
considerations’ as (i) commercial success, (ii) long felt but unresolved needs, (iii)
failure of others etc. might be utilized to give light to the circumstances surrounding
the origin of the invention and may have relevancy as indicia of non – obviousness.

Even though the importance of such secondary considerations is well settled in the
United States, the Intellectual Property Appellate Board in India has held that under
Indian law, such considerations are not admissible. In Ajanta Pharma Ltd. versus
Allergan Inc.30, the Board held that “According to our Act, the patent is revoked if the
invention is obvious. So the secondary considerations cannot change that. Therefore
the secondary objective evidence is not relevant in determining non-obviousness as
per law.” This decision is under appeal and thus it remains to be seen if India will
adopt such secondary considerations that may be relevant for determining
obviousness under Indian law.

We will finish our analysis of the law on obviousness by going back to our chair
example (See Section 2.5). Is the claim on the four – legged chair obvious? The first
prong of the analysis will require us to determine if a person skilled in the art would
combine the disclosures made in the patent relating to the three – legged chair and the
four-legged stool given the problem that he had set out to solve i.e. the instability of
three – legged chairs. The second prong of the analysis will be as follows – whether,
given the disclosures in these prior art references, would it be obvious for a person
skilled in the art to increase one leg of the chair to increase the stability of chairs?
29
383 US 1
30
Decision in ORA/20/2011/PT/KOL available at http://www.ipab.tn.nic.in/172-2013.htm

13
Would this solution naturally suggest to a person skilled in the art? I leave it to you to
form your own answers to these questions.

Industrial Application

When is an Invention Said to be Capable of Industrial Application?

The term “capable of industrial application “is defined under Section 2(ac) of the
Patents Act which states that “in relation to an invention, means that the invention is
capable of being made or used in an industry;”. It is noteworthy that the words used
are “capable of being used” rather than simply “being used’. Thus the patentee need
not have actually used the invention in an industry to satisfy this requirement and the
invention merely needs to be capable of being used in an industry.

Unfortunately, this definition is not very helpful and not many Courts have dealt with
this issue in any detail. We will thus have to rely on judicial interpretations in other
countries to understand this issue better. A leading case, which summarizes the law as
it stands today on this issue, is Eli Lilly versus Human Genome Sciences Inc.31. In that
case, Justice Kitchen summarized the law on this issue as follows:

a. “The notion of industry must be construed (interpreted) broadly. It

includes all manufacturing, extracting and processing activities of
enterprises that are carried out continuously, independently and for
commercial gain (BDP1 Phosphates/Max-Plank). However, it need not
necessarily be conducted for profit (Chiron) and a product which is shown
to be useful to cure a rare or orphan disease may be considered capable
of industrial application even if it is not intended for use in any trade at all
(Hematopoietic cytokine receptor/Zymogenetics).

31
[2008] RPC 29

14
b. The capability of industrial exploitation must be derivable by the skilled
person from the description read with the benefit of the common general
knowledge (PF4A receptors/Genentech).

c. The description, so read, must disclose a practical way of exploiting the

invention in at least one field of industrial activity (BDP1
Phosphates/Max-Plank; Multimeric Receptors/Salk Institute).

d. More recently, this has been re-formulated as an enquiry as to whether

there is a sound and concrete basis for recognising that the contribution
could lead to practical application in industry. Nevertheless, there
remains a need to disclose in definite technical terms the purpose of the
invention and how it can be used to solve a given technical problem.
Moreover, there must be a real prospect of exploitation which is derivable
directly from the specification, if not already obvious from the nature of
the invention or the background art (Hematopoietic cytokine
receptor/Zymogenetics; Serine Protease/Bayer).

e. Conversely, the requirement will not be satisfied if what is described is

merely an interesting research result that might yield a yet to be identified
industrial application (Multimeric Receptors/Salk Institute). A speculative
indication of possible objectives that might or might not be achievable by
carrying out research is not sufficient (BDP1 Phosphatase/Max-Plank).
Similarly, it should not be left to the skilled reader to find out how to
exploit the invention by carrying out a research programme
(Hematopoietic cytokine receptor/Zymogenetics).

f. It follows that the purpose of granting a patent is not to reserve an

unexplored field of research for the applicant (BDP1 Phosphatase/Max-
Plank) nor to give the patentee unjustified control over others who are

15
 actively investigating in that area and who might eventually find ways
actually to exploit it (Hematopoietic cytokine receptor/Zymogenetics).

g. If a substance is disclosed and its function is essential for human health

then the identification of the substance having that function will
immediately suggest a practical application. If, on the other hand, the
function of that substance is not known or is incompletely understood, and
no disease has been identified which is attributable to an excess or a
deficiency of it, and no other practical use is suggested for it, then the
requirement of industrial applicability is not satisfied. This will be so even
though the disclosure may be a scientific achievement of considerable
merit (BDP1 Phosphatase/Max-Plank).

h. Using the claimed invention to find out more about its own activities is not
in itself an industrial application (BDP1 Phosphatase/Max-Plank).

i. Finally, it is no bar to patentability that the invention has been found by

homology studies using bioinformatics techniques (Hematopoietic
cytokine receptor/Zymogenetics) although this may have a bearing on how
the skilled person would understand the disclosure.”

The above quoted passage is a summary of both the US and the UK law on the
subject. India, in my view, is likely to follow similar trends.

Requirement of Disclosure under the Indian Patents Act

The Patents Act, 1970 lays down certain provisions mandating disclosure in respect of
foreign filings and the best method of performing the invention; and deposit of
biological material used in the invention to the specified international authority.

A. Disclosure under Section 8

Section 8 (1) of the Indian Patent Act states that:

16
 “Where an applicant for a patent under this Act is prosecuting either alone or
jointly with any other person an application for a patent in any country
outside India in respect of the same or substantially the same invention, or
where to his knowledge such an application is being prosecuted by some
person through whom he claims or by some person deriving title from him, he
shall file along with his application or subsequently within the prescribed
period as the Controller may allow—

(a) A statement setting out detailed particulars of such application; and

(b) an undertaking that, up to the date of grant of patent in India, he would

keep the Controller informed in writing, from time to time, of detailed
particulars as required under clause (a) in respect of every other application
relating to the same or substantially the same invention, if any, filed in any
country outside India subsequently to the filing of the statement referred to in
the aforesaid clause, within the prescribed time.”

It essentially means that when filing an application for grant of a patent in India, the
applicant must disclose any patent which is same or substantially the same as its
Indian counterpart. Thus, even if the invention possesses substantial similarity to
another invention for which an application is filed in a foreign jurisdiction; section 8
(1) mandates the disclosure of such invention at the time of making the application.

On the other hand, Section 8 (2) which reads as: “At any time after an application for
patent is filed in India and till the grant of a patent or refusal to grant of a patent
made thereon, the Controller may also require the applicant to furnish details, as
may be prescribed, relating to the processing of the application in a country outside
India, and in that event the applicant shall furnish to the Controller information
available to him within such period as may be prescribed.” mandates disclosure only

17
when it is requested by the Controller in the First Examination Report (FER) and not
at the time of making the application32.

In the case of Chemtura. Corporation vs. Union of India33, the Delhi High Court,
while rejecting the submission that the omission to furnish particulars is not serious
enough to affect the grant of the patent, it did not impinge on its validity, stated that:

“It cannot be said that the omission to comply with the requirement of Section
8(2) was not serious enough to affect the decision of the Controller to grant
the patent to the Plaintiff. The information, if provided, would have
enlightened the Controller of the objections raised by the US patent office and
the extent to which the Plaintiff had to limit its claims to the torus shape of the
compression spring, which was a key feature of the subject device. Had the
Controller been informed of the Plaintiff‟s own patent No.3932005 dated
13th January 1976, he would have been called upon to examine if that patent
taught the use of a toroidal shape of a compression member and whether
therefore the subject device was an inventive step within the meaning of the
Act.”

Similarly, in the case of TATA Chemicals vs. Hindustan Unilever Limited 34, the
Intellectual Property Appellate Board held that:
“The Act requires compliance with Section 8(1) and 8(2) and the patent
applicant must comply with the same. Otherwise the patent is liable to be
revoked.”

32
https://www.lakshmisri.com/Uploads/MediaTypes/Documents/A%20Practical%20Approach%20to
%20Fulfilling%20Section%208%20Requirements.pdf
33
CS(OS) No. 930 of 2009

34
ORA/18/2010/PT/MUM

18
However, the above position was reversed by the Delhi High court in the case of
Major Sukesh Behl & Anr. vs. Koninklijke Philips & Anr. 35 wherein it was held
that:
“Though any violation of the requirement under Section 8 may
attract Section 64(1)(m) for revocation of the patent, such revocation is not
automatic.”

B. Disclosure under Section 10

Disclosure is the quid-pro-quo of the patent system. Section 10 of the Indian Patents
Act governs standards related to substantive disclosure of inventions that are
patentable under the Act.
Requirement to Supply Drawings
Section 10 (2) states that
“Subject to any rules that may be made in this behalf under this Act, drawings
may, and shall, if the Controller so requires, be supplied for the purposes of
any specification, whether complete or provisional; and any drawings so
supplied shall, unless the Controller otherwise directs,3 be deemed to form
part of the specification, and references in this Act to a specification shall be
construed accordingly.”
Sufficiency & Enablement
Section 10 (4) (a) & (b) state that
“Every complete specification shall—
(a) Fully and particularly describe the invention and its operation or use and the
method by which it is to be performed;
(b) Disclose the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection.”

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FAO(OS) No.16 OF 2014

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This is known as the requirement of sufficiency of disclosure which mandates full
description of the invention, its operation or use, and the method of performing the
invention; along with the best method of performing it.

The IPAB, in the case of The Alleppy Company Ltd. Vs. The Controller of Patents
& Ors. (2010) observed that:

“The description should be enabling to clearly clarify the doubts and remove
the vagueness in the claim….The rest of the claims are dependent ones on the
principal claim. That means the invention has neither been fully and clearly
defined nor fully and particularly supported by necessary description in the
complete specification…On this ground, the patent is liable to be revoked as
the applicants have established the ground of insufficiency of description of
the invention.”

Deposit of Biological Material & Disclosure of Source of Geographical Origin of

Biological Materials
Proviso to Section 10 (4) also states that:
“If the applicant mentions a biological material in the specification which
may not be described in such a way as to satisfy clauses (a) and (b) [of
Section 10 (4)], and if such material is not available to the public, the
application shall be completed by depositing the material to an international
depository authority under the Budapest Treaty…….and disclose source and
geographical origin of the biological material in the specification, when used
in an invention.”
In India, the International Depository Authority is located in Chandigarh.
While making an application for grant of a patent, the applicant is required to indicate
clearly the Source of geographical origin of any biological material used in the
Specification, wherever applicable, in the application form.
Further, the detailed description of the invention should disclose the source and
geographical origin of the biological material mentioned in the Specification 36.
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http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/
1_28_1_manual-of-patent-office-practice_and-procedure.pdf

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Points to Remember

Requirements are conjunctive i.e. all the requirements need to be satisfied for
a product or process to be considered an invention.
Sec 3(b) provides that, that even though resulting from an invention, some
things may not be granted a patent for “other considerations
Sec 3(d) & 3(e) are ‘deeming’ provisions that “declare that certain things shall
not be deemed to be inventions”.
An invention has to pass through both the above filters to be eligible for grant
of a patent.
A claim is considered new if all the elements of the claim cannot be found in a
single prior art reference
Prior art means everything made available to the public by means of a written
or oral description, by use, or in any other way, before the priority date of the
invention.
To destroy novelty of a claim, all the elements of the claim must be found in a
single prior art reference and thus combination of two prior art documents is not
possible in the novelty context.
Whether or not a product or process has an inventive step is to be adjudged
from the point of view of a “person skilled in the art.
Hindsight bias refers to the phenomenon in which inventions seem obvious 21
after the fact even though they would not have been obvious before they were
invented.
Teaching away concept- if the prior art “teaches away” or prejudices the
Self-check Exercises

⮚ The requirements for granting patents are conjunctive. Elucidate.

⮚ Differentiate between Hindsight Bias & Teaching Away Concepts.

⮚ Explain the principle of non – obviousness & its implications.

⮚ What is the policy underlying Inventive Step ?

⮚ How does the Patent Act mandate disclosure requirements under different provisions?

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