“Inventive Step” under the Patents Act, 1970: Where Is the Confusion?

The definition of novelty, non- obviousness and industrial applicability criteria, despite conceptual similarities, may differ subtly from one jurisdiction to another. Consequently, it is necessary to keep an open mind when approaching the definitions to avoid unwarranted assumptions which have no basis in the statute.

The definition of “inventive step” is prone to such assumptions because it is assumed that the definition is universally the same. Inventive step under the Act in Section 2(ja) is defined as follows:

“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

The abridged and incorrect interpretation of the definition is that inventive step is equated to “a non-obvious technical advance”. This, however, has no basis in the wording of the definition or the legislative policy that is reflected in the definition.

If inventive step were to only mean a “non-obvious technical advance”, it renders nugatory the use of “or having economic significance or both”. The simpler way of understanding the definition is to expand it as follows:

1. Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge and that (reference is to feature, not "technical advance") makes the invention not obvious to a person skilled in the art

2. Inventive step means a feature of an invention having economic significance and that (reference is to feature, not "technical advance") makes the invention not obvious to a person skilled in the art

3. Inventive step means a feature of an invention having technical advance and economic significance and that (reference is to feature, not "technical advance") makes the invention not obvious to a person skilled in the art.

In other words, inventive step refers to that feature of the invention which satisfies the following twin criteria:

1. The feature involve a technical advance or must have economic significance or both; and

2. The feature must be non-obvious to a person skilled in the art.

Therefore, inventive step does not refer solely to a “non-obvious technical advance”, but in fact refers to a “non-obvious feature” which involves either a technical advance or has economic significance or both.

The corollary is that the definition distinguishes “technical advance” from the requirement of non-obviousness. “Technical advance” is a misnomer owing to the presence of the word “advance”.  Under the definition, a technical advance by itself is not non-obvious, since if that were to be the case a “non-obvious technical advance” would be redundant.

One of the principles of statutory interpretation is that no word or term or phrase used in a statutory provision must be rendered redundant/repetitive. Applying this principle to the definition of inventive step, it bears out that a technical advance simply refers to a feature which is technical in nature, whose qualitative contribution is to be further assessed by the requirement of “that makes the invention not obvious to a person skilled in the art”.

The other important corollary is that the presence of technical advance is not the sole criterion to judge if an invention has an inventive step. Economic significance of a feature which is non-obvious too by itself could help the product or the process satisfy the “inventive step” requirement. Importantly, the criterion of economic significance is equally applicable to products and processes.

It is important to understand that a clearer and surer approach to the law applying time-tested principles of statutory interpretation is the best way to contribute to the shaping of an informed jurisprudence and formulation of policy initiatives. It is not possible to suggest what the law ought to be unless we understand with clarity what the law is.