The Elusive Quest for the Definition of Obviousness: Patent Law’s Holy Grail

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."

How Obvious is Obviousness?

I was asked by a very close friend of mine to point out (an impromptu viva voce of sorts) the primary difference between Section 25(1)(e) and Section 64(1)(f) of the Patents Act.

Section 25(1) of the Act relates to pre-grant opposition proceedings and Section 64 relates to revocation proceedings. The relevant portions of the provisions are reproduced thus:

Section 25. Opposition to the Patent:

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground-

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what : was used in India before the priority date of the applicant's claim

Section 64. Revocation of the Patent:

(1)Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, 1[be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counterclaim in a suit for infringement of the patent by the High Court] on any of the following grounds, that is to say—

(f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;

Notice the difference between “is obvious AND CLEARLY does not involve any inventive step” in Section 25(1)(e), and “is obvious OR does not involve any inventive step” in Section 64(1)(f).

By using “logical operators” such as “and”/”or” between “obvious” and “inventive step”, is the Act saying that obviousness is not the same as lack of inventive step? Why not take a look at the definition of an “inventive step” under Section 2(ja) of the 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

So inventive step = (feature involving technical advance over prior art OR economic significance OR both) PLUS non-obviousness

Stated otherwise, for a feature to qualify as an inventive step, it must constitute non-obvious technical advance OR non-obvious economic significance OR, non-obvious technical advance and economic significance.

If non-obviousness is so integral a condition for a feature to qualify as an “inventive step”, why do Sections 25(1)(e) and 64(1)(f) separate obviousness from lack of inventive step using “and”/”or”?

There are two ways of interpreting the definition of "inventive step", and consequently two ways of understanding its import on Sections 25(1)(e) and 64(1)(f):

First Interpretation

An inventive step could be a feature which constitutes a technical advancement over prior art, or has economic significance, regardless of it being non-obvious or otherwise. In a way, this means that even an obvious inventive step is an “inventive step” merely because it represents technical advancement or has economic significance.

Simply put, it appears to allude to novelty of the inventive step, regardless of its ingenuity.

The consequence of this is that lack of non-obviousness does not translate to lack of inventive step, it merely translates to lack of a non-obvious inventive step. If this interpretation of the definition of “inventive step” were to be accepted, the effect on construction of Sections 25(1)(e) and 64(1)(f) is as follows:

A. Under Section 25(1)(e), in order for the Controller to reject the patent application and accept the pre-grant opponent’s contention, the patent application must suffer from lack of an inventive step AND obviousness. In other words, the Controller must satisfy himself that the application is defective on both grounds.

B. Under Section 64(1)(f), the IPAB or the High Court may revoke the patent EITHER for lack of an inventive step OR for obviousness i.e. presence of one of these defects is sufficient reason to revoke the patent.

This line of argument appears to make sense. However, the hurdle to accepting this in toto is the absence of a comma separating “technical advance as compared to the existing knowledge or having economic significance or both” and “and that makes the invention not obvious to a person skilled in the art”.

 Let’s see if the second line of interpretation takes us to another possible logical conclusion.

Second Interpretation

In the absence of a comma separating “technical advance as compared to the existing knowledge or having economic significance or both” and “and that makes the invention not obvious to a person skilled in the art”, the construction that one could come to is, that non-obviousness is a condition precedent for an “inventive step” to be treated as one, mere novelty will not suffice.

Put simply, there is nothing inventive about a feature which is obvious. And since there is nothing inventive about an obvious feature, the invention too is no "invention" since it is obvious (reason? "invention" means a new product or process involving an inventive step...Section 2(j))

If this is how the definition of “inventive step” is to be construed, then the use of “AND”/ “OR” in Sections 25(1)(e) and 64(1)(f) do not materially differ. What this means is  “And” and “or” mean the same thing in Sections 25(1)(e) and 64(1)(f).

(Again) if this is the case, what is the purpose of using “CLEARLY does not involve any inventive step” in Section 25(1)(e)? The use of “clearly” could mean that even if the Controller finds the invention obvious, he has to be absolutely convinced of the absence of an inventive step before he rejects the patent application.

This practically translates to a “clearly reasoned order” by the Controller if he arrives at a finding which is adverse to the patent applicant.

Fine, this too makes some sense. But the irony is, under this interpretation, the standard of rigour to be followed by the Controller under Section 25(1)(e) would be higher and much more stringent than the standard to be followed by the Court or the IPAB in a revocation proceeding under Section 64(1)(f) (!!!)

Is this a conundrum worth thinking about, or is it mere futile semantic jugglery by a “blackcoat”?

(Image Source: www.cartoonstock.com) 

An Old Pharma Decision: Bombay High Court (1968) – III

Continuing our discussion from the last 2 posts, in this post the remaining grounds of invalidity have been discussed. 

B. Want of Novelty

As stated in the last post, the essential embodiment of the plaintiffs’ invention did not lie in a method of desulphurisation of sulphonylthioureas, it lay in selecting and combining certain base materials which upon reaction would throw up a product with hypoglycaemic results, sans the side effects in the prior art. 

In the prior art, amino-sulphonamides were used in anti-diabetic treatment, however the groups/radicals attached to either ends of amino-sulphonamides caused certain undesirable effects. The plaintiffs’ invention was devoid of these harmful effects owing to the limitation on the maximum number of carbon atoms which R and R1 could contain. In other words, identification and use of R and R1 constituted the inventive step in the plaintiffs’ invention, which was unknown to the state of art prior to the plaintiffs’ disclosure.

C. Lack of Inventive Step

This brings us to the question of non-obviousness; the Court’s observations on this issue are, for me, the most significant contribution of the judgment to Indian patent jurisprudence. The Court rightly recast the issue of non-obviousness in the case as one involving a question of “production of new substances by known methods from known materials, which can be supported from the point of view of subject-matter”. 

This was apt because the inventive step of the plaintiffs’ invention lay in selecting the right materials from available materials to produce compounds with desired characteristics. The Court recalled the test laid down in May & Baker Ltd. and Ciba Ltd., (1948) 65 RPC 255, which was as follows:

(i) An invention consisting of the production of new substance from known materials by known methods cannot be held to possess subject-matter, merely on the ground that the substances produced are new, for the substances produced may serve no useful purpose, in which case the inventor will have contributed nothing to the common stock of useful knowledge (the methods and materials employed being already known) or of useful materials (the substances produced being ex hypothesis, useless).

(ii) Such an invention may, however be held to possess subject-matter provided the substances produced are not only new but useful, though this is subject to the qualification that the substances produced must be truly new, as opposed to being merely additional members of a known series (such as the homologues) and that their useful qualities must be the inventor's own discovery as opposed to mere verification by him of previous predictions.

(iii) Even where an invention consists of the production of further members of a known series whose useful attributes have already been described or predicted, it may possess sufficient subject-matter to support a valid patent provided the somewhat stringent conditions prescribed by Maugham J., as he then was, in I. G. Farbenindustrie A. G.'s Patents, (1930) 47 RPC 289 as essential to the validity of a selection patent are satisfied, i. e. the patent must be based upon on some substantial advantage to be gained from the use of the selected members of the known series or family of substances, the whole) of the selected members must possess this advantage, and this advantage must be peculiar (or substantially peculiar) to the selected group

The Court again cited Halsbury, which postulates thus:

An invention usually involves three stages:

(1) the definition of the problem to be solved, or the difficulty to be overcome,

(2) the choice of the general principle to be applied in solving the problem overcoming the difficulty; and

(3) the choice of the particular means to be used. 

The merit in any one of these stages, or in the whole combined, may support the invention, and it is, therefore, probably more important to consider the advance in knowledge due to the inventor rather than to examine in detail the variations from the former product.

In this case, the inventive step was the replacement of radicals attached to amino-sulphonamides (such as carbutamide) by a methyl group, resulting in Tolbutamide. On the ingenuity of the inventive step, the Court’s views are of critical importance:

“The substitution of CH. 3 in the para position for NH. 2 was the inventive step. It was a novel idea and the plaintiffs' patent therefore embodies a new and useful composition of matter, or at any rate, a new and useful improvement in it. It was not a thing which just any person working in this field would try, but it required extensive research. As observed in the Irish judgment to which I will refer later on, Courts of law must guard against the common human failing of being wise after the event in regarding something that has been discovered by research as obvious.”

The so-called “hindsight bias” which the US Supremes had warned against in KSR v. Teleflex in 2007, the Bombay High Court had already cautioned against in 1968. Commenting further on the inventive step, the Court held:

“...though sulphonylureas were known prior to the invention in suit, it was not known that if they were activated by certain radicals they would have blood sugar reducing properties. The use of sulphonyl-ureas with radicals on either side with certain limitations in regard to Carbon atoms so as to obtain hypoglycaemic properties would itself be an addition to the “common stock of useful knowledge” within the May & Baker's case, (1948) 65 RPC 255”

On the basis of the above reasoning, the Court dismissed the ground of obviousness.

As for the ground of lack of utility/usefulness of the invention, I leave it for the readers to read for themselves some very insightful observations of the Court in holding the invention useful, despite the patent taking within its ambit an unknown number of unknown compounds which were identified/characterised on the basis of the base materials used and the properties exhibited.

Thoughts

More than anything, the judgment of the Bombay High Court is a case in point to show that independence of mind and “vertebracy” are two essential prerequisites if Indian Courts are to develop their own principles and doctrines.  I say this because, unlike this decision, the fear of the unknown is palpable in most Indian decisions on patents, which I think, is the reason that most decisions are mere recapitulations of case laws from either sides of the Atlantic. 

Case laws can help Indian Courts only to the extent of equipping them with certain tools of adjudication, but application of those tools to the facts of a case is something Indian Courts have to do by themselves. Surrogacy in application of the mind simply does not and cannot work, particularly in a field which is highly contextual. 

Let’s hope Indian Courts draw inspiration from Justice Vimadalal's attempts to shape an Indian view on patents.