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”?

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