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.

2
Introduction
Patent is granted for an “invention” – this is a universally accepted principle
of patent law1 . The patent specification describes the invention 2 and 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 “

3
 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 abovementioned 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 competition4. 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.

4
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 sub-sections 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 substances 6 , 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.

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

5
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 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 invention 14 . 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
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

6
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.”

The element 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

7
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):

“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 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 advance over existing knowledge;

Or

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

8
 (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

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

9
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 prejudices 17.

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

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

10
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. 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

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
21
2012 (52) PTC 1 (Del)

11
 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 negative

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.

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

22
Kirsch Manufacturing Co. v. Gould Mersereau Co., 6 F.2d 793
23
Picard v. United Aircraft Corporation, 128 F.2d 632.

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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 obvious24. 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

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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 case27 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 art 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

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

14
 the tendency to use (even subconsciously) “hindsight” and the inventor’s own
work to determine obviousness. The adversary system fails to guide 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
case 29 wherein 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

29
383 US 1
30
Decision in ORA/20/2011/PT/KOL available at http://www.ipab.tn.nic.in/172-2013.htm

15
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? 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:

31
[2008] RPC 29

16
a. “The notion of industry must be construed 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).

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

17
 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
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.”

18
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:
“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

19
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 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,

32

https://www.lakshmisri.com/Uploads/MediaTypes/Documents/A%20Practical%20Approach%20to%2
0Fulfilling%20Section%208%20Requirements.pdf
33 CS(OS) No. 930 of 2009

20
 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 Limited34,

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.”
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 be deemed

34 ORA/18/2010/PT/MUM
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FAO(OS) No.16 OF 2014

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 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.”

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

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 (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
Specification36.

36

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 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
person of ordinary skill in the art from embarking on the path chosen by
the inventor, then the invention is non – obvious.
 Capable of industrial application, in relation to an invention, means that
the invention is capable of being made or used in an industry.

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Self-check Exercises

 The requirements for granting patent 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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