The title of this post is the
title of my paper which I had authored as an undergraduate law student and which
was selected as the best essay in the international
essay competition organized in the year 2008 by the International
Association for the Advancement of Teaching and Research in Intellectual
Property (ATRIP). Although dated, I am sharing the essay for the benefit of
those of our readers who may wish to read it. For those interested, a modified and
much more refined version of the paper was subsequently published in 2010 in
the International Review of Intellectual Property Law and Competition Law (41
IIC 410 (2010)).
The central exercise attempted in
the essay was to understand and compare the standards of obviousness adopted by
the US Supreme Court in KSR v. Teleflex and the UK House of Lords in Angiotech Pharmaceuticals Inc v. ConorMed Systems Inc. Extracted below
are a few excerpts from it:
“Restatements sometimes, rather most of the time, help us understand
concepts better and may even lead to new theories. This is particularly true of
the concept of obviousness; though obviousness has been the subject-matter of
quite a number of decisions and disquisitions, every subsequent judicial
pronouncement brings out a feature of its mien which hasn’t been dealt with
before or which when restated brings out a new perspective. This is not because
the concept is nebulous, but because it is inherently fluid and subjective. As
more and more hitherto unknown or unfathomable situations present themselves,
obviousness too adapts itself accordingly without giving up what is
characteristic of it- Change and the ability to map change....
This criterion necessarily has to remain dynamic in its application for
it reflects the rate of change of technology or to give it a negative
definition, it mirrors the changing standards of evaluation of obscurity or
obsolescence of knowledge. In fact, such semantic agility suitably equips it to
keep pace with technology, which is an ideal quality expected of every branch
and precept of law- to mirror life.
The Supreme Court of the United States in KSR v. Teleflex (2007) lent a
touch of dynamism to the concept of obviousness by advocating a more flexible
approach without altogether replacing the three step Teaching-Suggestion-Motivation
(TSM) test.
More recently, the House of
Lords of the United Kingdom, in Angiotech Pharmaceuticals Inc v. Conor
Medsystems Inc (2008) uncovered, though not with complete success, another
facet of obviousness in the process of adjudicating the issues involved. Though
both these judgments in general discuss obviousness, there exists an important
distinction between the two; where KSR elaborates on the pros and cons of an
“obvious to try” standard vis-à-vis a rigorous standard of obviousness, Angiotech
deals with the principle of sound prediction of the technological success of an
invention revealed in the patent. It must be understood that the principle of
sound prediction has a close connection to an “obvious to try” line of argument.”....
....“4.5.1 The Metaphorical Pyramid of
Logic
Let us assume that the logical structure is in the form of a pyramid
with the focus becoming sharper as one moves towards the polygon vertex,
generally referred to as the apex of the pyramid. The apex represents the
specific inventive step of the patented invention while the building blocks
leading to the apex allude to the path taken to reach the apex, and the very
foundation of the pyramid refers to prior art...
...6. Conclusion
It must be
understood that obviousness is mixed issue of fact and law and therefore turns
on the nature and standard of evidence submitted. The corollary to this
proposition is that an “obvious to try” standard is subsumed in the standard of
obviousness. Where it suffices to show that to venture in a particular
direction is itself obvious with no possibility of new results than the ones
already known, then no matter what one calls it, one is going by the “obvious
to try” standard. It follows that if the so-called “invention” is so manifest
that its banality can be proved by the very act of trial, then it should not be
much of a fight for a challenger to go one step forward and establish the
obviousness of the invention itself rather than limiting himself to proving
that it was too obvious to try.
If KSR could be
accused of blurring the concept of obviousness in its attempt to be
progressive, Angiotech is a step backward; consequently, the locus of
obviousness as it stands today can be compared to Salsa. The tragedy in both
cases is that while the rest of the world looks up to the US and UK Courts for
clarity on patent law, the Apex Courts of both these countries have not risen
to the occasion.
Interestingly, the Federal Circuit in the US and the Court of
Appeals in the UK seem to have better track records for being consistent in
their approach with the oft-quoted critique being that their consistency over a
period of time is a sign of lack of imagination. It would do us a world of good
to realise that in our efforts to define certain fundamental concepts of patent
law such as obviousness, we should not go to the extreme extent of verbalizing
the law beyond a reasonable point. Both form and content should be given their
due if patent law is to achieve its objective- better innovation and not
necessarily greater number of patents."
No comments:
Post a Comment