what is a Patent specification

Specification is a technical disclosure statement that describes the whole invention that the applicant is claiming. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. It also enables a person ordinarily skilled in the art to understand and perform the invention.

Specifications are of two types:
(i) Provisional: It ordinarily contains the brief disclosure of the invention and is filed to claim the priority for the invention while the complete specification is developed and the patent application is prepared and filed. It does not contain claims and have to be followed by a complete specification within 12 months.
(ii) Complete: It describes the whole invention that the applicant is claiming. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention.

Supreme Court of India adjudicates on dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law

Author: Sudhir Kumar

Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors..

The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and "appeals against order passed by Controller of Patents under pre Grant or post grant opposition".

It would be wise to state the brief facts of the matter in tabular form for better understating of the matter.

26.03.1999 Section 116 of the Indian Patents Act, 1970 amended by the Patents (Amendment) Act, 1999 w.e.f. March 26, 1999 that provides for appeal to High Court against orders passed by the Controller of Patents. At that time only provision/remedy to oppose the grant of patent was pre grant opposition.

14.6.2000 J.Mitra & Company Pvt. Ltd. the appellant herein filed an application for grant of Patent

25.06.2002 Patents (Amendment) Act, 2002 was promulgated by Legislature and to hear appeals against orders passed by the Controller Appellate Board established under Section 83 of the Trade Marks Act, 1999 was made the Appellate Board for the purposes of Patent Act (under Section 116) and under Section 117A provision was made that appeal against order of Controller under Section 25 (pre Grant Opposition) and other provisions shall lie only in the Appellant Board. But Section 116 and 117A were not notified and brought into force. Still at that time only provision to oppose the grant of patent was pre grant opposition under Section 25 and same brought into force vide Notification dated 20.5.2003.

20.11.2004 The application was notified by the Patent Office after scrutiny

Span Diagnostics Limited opposed the application under the provisions of Section 25 as stood then (Pre Grant Oppositon)


04.04.2005 The Legislature enacted the Patents (Amendment) Act, 2005 w.e.f. 01.101.2005 but not all provisions were simultaneously brought into force. Only certain sections of the Patents (Amendment) Act, 2005 were brought into force. Provisions for Pre Grant as well as Post Grant Opposition were made. But Section 117A was amended and expression Section "25" was replaced with Section 25(4),effectively meaning that appeal shall lie against order passed under Section 25(4) i.e. order passed by Opposition Board in Post Grant Patent. The Legislature allowed appeals only against decision passed by the Controller in a Post Grant Opposition not pre Grant Opposition. Though the provisions of Section 25 were brought into effect, but the provisions of Section 116 and 117A were not brought into effect.


21.03.2005 Pre-grant opposition was filed under Section 25(1) of the Patent Act. It is to be noted that Patent (Amendment) Act, 2005 was enacted only after filing of this opposition on 04.04.2005 but was brought into effect from 01.01.2005. Therefore only provision available for opposition on such date was under the Patent (Amendment) Act, 2002.

23.08.2006 Pre Grant Opposition was rejected by the Controller of Patents. And as the Section 116 and 117A was not enacted on such date only remedy was to file Appeal under the provisions of Section 116 of Patent (Amendment) Act, 2002 that provides for filing the appeal before the High Court.

22.09.2006 The patent was granted. From here contention of Appellant arises, that after grant of Patent

19.10.2006 Appeal filed before the High Court against the order passed by the Controller of Patents in the patent opposition being FAO no. 292/2006 & 293/2006.

02.04.2007 Provisions of Section 116 and 117A, brought into effect by notification by the Legislature

03.04.2007 Provisions of Section 117G, that called for transfer of all pending proceeding against any order or decision of Controller and all cases pertaining to revocation other than on a counter claim in a suit for infringement and rectification of register pending before any High Court to the Appellate Board was brought into effect by notification by the Legislature. The Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.


In words of Hon'ble Supreme Court "This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005."

The enactment of Patents (Amendment) Act, 2005, introduced for the first time a dichotomy in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and also as to "appeal" that may be preferred against any orders that may be passed by the Controller of Patents in opposition proceedings. No doubt, the Amendment Act of 2005 brought major structural change in the Indian Patent Law as per India's Obligation under WTO/GATT. As per the amendment the appeals against orders passed under the post-grant opposition by the Controller shall lie before the Appellate Board and not to the High Court. But the enabling provision i.e. Section 117A was not brought into force till April 2, 2007. Therefore, appeal if any has to be preferred before the High Court under Section 116 of the Patent (Amendment) Act, 1999.

Though the provisions for an appellate forum to hear appeals against order passed by the Controller of Patents were enacted by legislature in 2002, the Govt was not able to start functioning of the Appellate Tribunal till April 2007 and hence Section 116 and 117A were not brought into force.

The Legislature intended to provide for only one statutory appeal against order passed by the Controller that too in a Post Grant Opposition to the Appellate Board but by not bringing Amending Section 61 into force till April 02, 2007, appeals filed during the interregnum i.e. between 01.01.2005 to 01.04.2007, as in this case, became vulnerable and liable to be dismissed as misconceived as contended by the appellant before Supreme Court.

Supreme Court observed "quite often the commencement of an Act is postponed to some specific future date or to such date as the Appropriate Government may, by notification in the Official Gazette, appoint. At times provision is made for appointment of different dates for coming into force of different parts of the same Act."

"An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation."

The Court while applying the above tests to the present case found that for the first time a dichotomy was introduced in the Patent Law by providing vide Section 25(1) for "opposition to pre-grant" and vide Section 25 (2) for "opposition to post-grant" of paten under the Patents (Amendment) Act, 2005. Earlier, there was no "post-grant opposition" and the only provision of challenge was a "pre-grant" challenge under Section 25 (1). By Patents (Amendment) Act, 2005, under Section 25(2) right is granted to an "aggrieved person" to challenge the patent even after its grant and the grounds of challenge are identical to Section 25(1) of the Act. Therefore giving a right after grant but limiting the right to only an "aggrieved person" and fixing the limitation period to one year after grant.

Though the Legislature further intended to limit the right to appeal only to post grant oppositions and obliterate appeal from "pre-grant proceedings" but the Executive did not bring the enacted law (Chapter XIX having provisions for appeals to the appellate board i.e. Section 116 and 117 A to H) into force vide a notification simultaneously along with other provisions of the Act especially Section 25 (1) and (2). As a result the chapter XIX containing amended Sections 116 and 117A(2) were not brought into force only on 2.4.07 (and 117G on 03.04.2007) whereas the concept of "Pre grant" and "Post-grant" oppositions were already brought into force w.e.f.1.1.2005. In words of the Hon'ble Supreme Court:

"This is where the legislative intent got defeated during the interregnum."

During that period only the Respondent filed appeals against the orders rejecting the Pre Grant Oppositions by Controller of Patents being FAO No. 292/06 and 293/06 before the High Court under Section 116 of the Patents (Amendment) Act, 1999 , as it stood on date of filing of appeal i.e. October 19,2006". On the date of filing of appeal, the amended Section 117A, suggested by Patents (Amendment) Act, 2005, was not brought into force, therefore, the Patents (Amendment) Act, 1999 prevailed under which an appeal lay before the High Court.

The Supreme Court held "Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, we are of the view that the first appeals, filed by respondent no.3 in the High Court being FAO No.292/06 and FAO No.293/06, would remain in the High Court. The said appeals would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06. The High Court will hear and decide the validity of the Order passed by the Controller dated 23.8.06 rejecting "pre-grant opposition" filed by respondent no.3. We are informed that there are hardly one or two matters of this nature which are pending.

Therefore, we are of the view that respondent no.3 cannot be let without remedy. In the special circumstances of this case, particularly when after 2.4.07 appeals against orders rejecting "pre-grant opposition" are not maintainable and particularly when FAO No.292/06 and FAO No.293/06 were filed by respondent no.3 prior to 2.4.07 under the old law, we are of the view that these two appeals shall be heard and decided by the High Court in accordance with law. The Appellate Board after 2.4.07 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e., in cases of orders passed in "post-grant opposition". Therefore, there is no point in transferring the pending FAO No.292/06 and FAO No.293/06 to the Appellate Board which has no authority to decide matters concerning "pre-grant opposition". Moreover, it may be noted that even Section 117G, which refers to transfer of pending proceedings to the Appellate Board, is also brought into force vide Notification dated 3.4.07. Keeping in mind the peculiar nature of the problem in hand, we are of the view that ends of justice would be subserved if the High Court is directed to hear and decide the appeals bearing FAO No.292/06 and FAO No.293/06 in accordance with law as it then stood, i.e., under Section 116 under Patents (Amendment) Act, 1999 against Orders passed by the Controller in "pre-grant opposition" proceedings.

The Section 6 of the General Clauses Act 1897 clarified the position of law and intent:

6. Effect of repeal.- Where this Act , or any Act made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not—

....


c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

The provision along with ratio laid down by Hon'ble Supreme Court in GSK case concerning the Exclusive marketing rights (GSK Case) made amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears.

Applying the same ratio in the present matter, though the rights were accrued to respondent before the provisions of Section 116 as envisaged under Patents (Amendment) Act, 2005 was enacted, but the provisions of Section 117A made very clear that intention of legislature is different i.e. no appeal shall lie against any order passed by Controller of Patents in Pre Grant Oppositions.

The pendency of only very few such appeals against pre grant orders during the interregnum made the Hon'ble Supreme Court to keep the matter with the High Court. Otherwise, the interpretation of "appealable orders" under 117A read with 117G might have settled the position of law as to what about the provisions against which right to appeal is taken away subsequently.

Article Source: http://www.articlesbase.com/patents-articles/supreme-court-of-india-adjudicates-on-dichotomy-introduced-for-the-first-time-by-the-patents-amendment-act-2005-in-the-patent-law-1359496.html

About the Author

Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com or www.aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.

Interpretation of Obviousness

Author: Sudhir Kumar

Definition:

Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.

To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.

INDIA

A. Obviousness under 1970 Act

Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

As inventive step was not defined in an invention, there was no such provision during examination.

Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition.

(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;

Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-

(f) 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 what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;


Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.

B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)

No change in the definition of invention till 2003

Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.

After which the inventive step was also considered during the examination.

And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.

C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)

The Definition of Inventive step was further revised.

Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve 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.

Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.

But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.

D. Approach of Indian Patent Office

1. Considers novelty and inventive step as one or the same thing.
The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.

2. Gives importance even to “A” category citations in the ISR/IPER for construction of Inventive step.

In a mechanical manner the Patent Office gives importance to even ‘A’ category citations and requires elaboration and difference in terms of inventive steps with regards to such cited arts.

3. Requires characterization in the claims-

It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.

4. As per the Manual of Indian Patent practice: The inventive step has to be determined in the following manner.

Has to be non-obvious when compared with the state of art,
State of mind (Flash of Genius) is to be looked into, the following question has to be borne into mind “would a non-inventive mind have thought of the alleged invention?” if answer is “no”, then the invention in non-obvious. (In other words whether the invention would have occurred to a person skilled in the art, if yes, then it is obvious.)

5. Whether the invention involves exercise of any skill or ability beyond than what is expected of a person skilled in the art. Combining the teaching of documents (Mosaics) with the art.

Although as per the manual of Patent practice for consideration and determination of the inventive step, the invention has to be looked as a whole and no conclusion should be made by taking individual parts of the claims that might be known or found to be obvious, but still the practice differs from the manual and without taking regard to whole claims/ invention, objections are raised and the Applicant is made to himself point out the inventive step in the invention.

INTERPRETATION OF OBVIOUSNESS IN FOREIGN COUNTRIES:

The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.

European Patent Office

Under Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the “Problem solution approach”.

Problem-solution approach:

In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-

Identifying the closest prior art, i.e., the most relevant prior art;

Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and

Examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This step is conducted according to the "could-would approach". Under this approach, “the question to address” in order to assess whether the invention involves an inventive step is as follows:

Is there any teaching in the prior art, as a whole, that would (not simply could) have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

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. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

UNITED STATES OF AMERICA

"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.

Flash of genius

The Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen.

The flash of genius test was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).

GRAHAM FACTORS

The factors a court will look at when determining obviousness and non-obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

the scope and content of the prior art;

the level of ordinary skill in the art;

the differences between the claimed invention and the prior art; and

objective evidence of nonobviousness.

In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:

commercial success;

long-felt but unsolved needs; and

failure of others.

Teaching-suggestion-motivation (TSM) test:

In Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), it was held that there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.[2] The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.

In one case, Applicant attempted to patent peanut butter and jelly sandwiches with crimped edges instead of crusts. The invention was challenged in the court that ruled that crimping method, which was essentially known was an obvious means of protecting the contents of the sandwich. The patent was therefore rejected for failing the non-obviousness test.

The list of non exhaustive rationales that may be used to find an invention obvious are as follows:

Combining prior art elements according to known methods to yield predictable results;

Simple substitution of one known element for another to obtain predictable results;

Use of known technique to improve similar devices (methods or products) in the same way;

Applying a known technique to a known device (method or product) ready for improvement to yield predictable results;

“Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

Known work in one field of endeavour may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if variations would have been predictable to one of the ordinary skill in the art;

Some teaching, suggestion or motivation in the prior art would have led one of the ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

NON ENGLISH SPEAKING COUNTRIES:

KOREA:

In accordance with the Korean Patent Examination Guideline (KPEG) the following procedure is carried out for determining inventive step:

whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;

whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; and

whether the claimed invention has any advantageous effect compared to the prior art.

Until recently Korean courts used to mechanically judge inventive step based on determination of substantial identicalness of purpose, construction and effect of the claimed invention and the prior art, and were silent on the specific standard for determination of inventive step.

However, recently on September 06, 2007 ([Supreme Court Ruling of 2005 HU 3284) for the first time Supreme Court suggested a specific standard for determining inventive step, which is different from the precedents. The Korean Supreme Court took a different approach in its interpretation of inventive step and ruled that inventive step should be denied when there is some suggestion or motivation to reach the claimed invention by combination or aggregation of the feature in the prior art or when the court can recognize that a person ordinary skilled in the art can easily come to the claimed invention by combination or aggregation of feature in the prior art in view of the level of technology, common general knowledge in the art, technical problem, progress trend of technology and needs in the pertinent technical field at the time of filing patent application.

In Korea, the manner in which an invention was made (flash of genius) generally cannot be used to deny inventive step. Many Court rulings have admitted inventive step when they recognized difficulty in construction of the invention. Therefore, assertion on presence of flash of creative genius in the invention would be supportive for inventive step.

In Korea, commercial success alone cannot be regarded as indicative of inventive step. However, commercial success can be supplementary evidence to strengthen the argument of inventive step when it coupled with other evidence for inventive step.

Through several rulings such as Supreme Court Ruling of 94 HU 1817 (Nov. 28, 1995) and Patent Court ruling of 2002 HEO 8424 (Sep. 4, 2003), Korean courts took into account the commercial success as affirmative evidence supporting inventive step of the invention when the applicant proved that his/her commercial success has been derived from the technical feature of the claimed invention, not from marketing skill or advertisement.

However, the Supreme Court clearly takes up the position that inventive step cannot be recognized only with commercial success itself (Supreme Court Ruling of 2004 HU 3546 (Nov. 10, 2005).

The Korean Patent Examination Guideline (KPTG) prohibit hindsight reasoning in determining inventive step of an invention and recently the Korean Supreme Court has also clearly declared that hindsight reasoning should be prohibited in judgment on inventive step [Supreme Court Ruling of 2006 HU 138 (Aug. 24, 2007)].

JAPAN

Apart from the universal general approach followed all over the world, in Japan there is also a specific approach for formulating reasoning that includes steps of:

Grasping the claimed invention and the cited invention (one or more cited inventions). In this case, the technical matter, which can be derived by taking the common technical knowledge into consideration, can be used for grasping the cited invention.

Selecting one cited invention (primary cited invention) which is most suitable for formulating and comparing the claimed invention with such cited invention and then clarifying the identicalness and the difference in technical elements.

Evaluating whether any reasoning for negating the inventive step of claimed invention can be formulated based on the content of the primary cited invention and other secondary cited invention(s) (including the well-known technique and conventional technique).

Factors Affecting Formulation of Reasoning

- It is evaluated whether or not the difference is mere selection of optimum materials in the cited invention, or mere design modification, or mere use of the well-known technique and conventional technique, and the like.

- It is evaluated whether or not there is any motivation which can be found in the cited invention for leading to the difference.

- It is evaluated whether or not the specification discloses any advantageous effect based on the difference as compared with the cited invention. The proof of any advantageous effect is very useful for asserting the inventive step.

Even if there is apparently a close relationship in the technical fields, common subject to be attained and common function/operation between the claimed invention and the cited invention, but if the cited references have a description which could negate the reasoning to combine these references, then the inventive step of the claimed invention may be positively evaluated.

ENGLISH SPEAKING COUNTRIES:

AUSTRALIA:

Section 18(1)(b) of the Patents Act 1990 (Cth) requires that an invention involve an 'inventive step', and Section 45(1)(c) requires inventive step to be considered during examination.

Section 7(2) provides that an invention is taken to involve an inventive step 'unless the invention would have been obvious to a person skilled in the relevant art' in the light of 'common general knowledge' in Australia and such other prior art information as may be added to that common general knowledge, as before the invention's priority date. There is thus only a limited prior art database available for an inventive step assessment - not every prior art document can be used.

For determination of the inventive step it is necessary to construct a hypothetical person skilled in that relevant art and obtain an appreciation of the common general knowledge of such a person. That hypothetical person's knowledge will then be used as a standard in evaluating whether the invention is obvious in the light of this knowledge or involves an inventive step.

The main question to be asked in a determination of inventive step has been distilled down to the following in Olin Mathieson v Biorex (1970) RPC157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Lid [2002] HCA 59 (12 December 2002):

"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result}.

In assessing whether an invention satisfies the requirements for the presence of an inventive step, the following (amongst others) are useful tools in assessing inventive step, but generally do not alone establish it:

(i) Long Felt Need

If the claim solves a "long felt need", there is a presumption that the claim is not obvious as other inventors must have also tried to solve the "long felt need" and not succeeded:

In Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at page 358 it was held:

" ... the question of obviousness is probably best tested, if this be possible, by the guidance given by contemporaneous events .... If an invention has resulted in the solution of a problem which has been troubling industry for years and achieves immediate success upon its introduction, then the suggestion after the event that the step was obvious inevitably rings a little hollow.

(ii) Copying of the Invention

Copying of the invention in preference to the prior art is indicative of an inventive step:

In Samuel Parkes & Co Ltd v Cocker Brothers Ld (1929) 46 RPC 241 at page 248 it was held by the Court that:

"When once it has been found ... that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is ... practically impossible to say that there is not present that scintilla of invention necessary to support the patent .... No evidence is more cogent of the success of the invention than that the defendants simply copied it and made profits by making and selling the products.

(iii) Complexity of the Work

If the work undertaken by the inventor in order to produce the invention was particularly complex, and not readily carried out, that is an indication that it was not a matter of routine. In such cases the invention would not be obvious.

In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [58] it was held that:

"The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.

Commercial success may also act as a factor which points to inventiveness, as stated in a recent important decision from the Australian High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21:

"Secondary evidence, such as commercial success... has a role to play in a case concerning inventive step... An Australian court should be slow to ignore secondary evidence or to rely on its own assumed technical expertise to reach conclusions contrary to such evidence. Australian courts have long recognised that the importance of such evidence and its weight will vary from case to case; it will not necessarily be determinative."

The dangers imposed by the hindsight analysis were first noticed by the Australian Courts in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (1980) CLR 253

"With the benefit of hindsight, it may be possible to say that each of the steps taken ... was logical, but that does not mean that the claimed inventive step was obvious”

This case was appealed and, Australian High Court in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 and the Aickin J. held that in relation to the process of recreating the prior art, the misuse of hindsight is most common. Once a novel idea, object, process or combination has been published it will often be possible to work backwards to identify the integers which comprise the claimed invention scattered among the prior documents held in libraries. Such a process was held by the High Court not to demonstrate a lack of inventiveness.

An approach used by the courts in HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437 to avoid this problem is the "problem-solution" approach.

"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem. "

The "problem-solution approach is based on the question of whether the claimed invention would have been obvious to the hypothetical skilled addressee when faced with a particular problem. The frame work of the "problem-solution" approach inherently embodies what happens in practice and is regarded by the Patent Office as covering the statutory framework. Given this, Australian Patent Examiners are instructed during examination to not take any inventive step objections without using the "problem-solution" approach and formulating a problem from the specification itself.

In general terms, it has been the dangers posed by hindsight analysis that have caused Australian courts to stress that there need only be a 'scintilla of invention' for a particular step not to be obvious, and that the simplicity of an idea does not prevent it from being inventive.

Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.

Article Source: http://www.articlesbase.com/patents-articles/interpretation-of-obviousness-466483.html

About the Author

Author is an Advocate and Registered Patent And Trademark Attorney with Aswal Associates and handles IPR division of the firm and is having the vast experience of having being associated with various premier IPR firms of India in the past. The author is also a member of APAA and can be reached at sudhir@aswal.com or www.aswal.com

Proposed Patent (Amendment) Rules 2011 and mandatory E Filing of patent documents

Author: Sudhir Kumar

In order to improve the efficiency and transparency in filing and processing of Patent Applications and to ensure accuracy of Patent data as well as related certificates provided by the Patent office, the Government of India has proposed to make e-filing of Patent applications mandatory. The draft of proposed amendments i.e. Patent (Amendment) Rules 2011 have been published for inviting public opinion and is expected to be notified soon. Any objections to same could be submitted to Ministry of Commerce, Government of India by April 1, 2011 (within 45 days of publication of proposed amendments)

The major proposed changed suggested under the draft Rules are as follows:

1. All Documents must be filed electronically duly authenticated by Applicant or Agent.

2. Filing of documents (except drawings and affidavits)

(i) Typewritten or printed in Hindi or English (unless directed or allowed by Controller) in large and legible characters not less than 0.28 cm in height and 1.5 spacing in between lines

(ii) A-4 paper with margin of 4 cm on top and left side and 3 cm on right and bottom.

(iii) Numbered in consecutive Arabic numerals at centre of bottom of sheet;

(iv) Numbering every fifth line of each page of description and claims at right half of the left margin;

(v) Signature other than in English and Hindi to be accompanied by a transliteration in English or Hindi capital letters;

3. In case of sequence listing of nucleotides or amino acids sequences, same must be filed in computer readable form (ASCII text file) along with fee (not applicable earlier)

4. Where online transmission cannot be initiated or could not be completed for whatever reasons, document can be handed over or send by post to Patent office within the stipulated time frame.

5. Amended as well as superseded documents to be submitted electronically. Every new or amended document be marked at Header of documents as Amended along with undertaking that unamended pages are the same as originally submitted.

In case of Individual Applicant Govt has proposed to provide assistance in E-filing to those for whom e filing is not convenient. And Controller has been vested with power of direct acceptance of their Patent documents in other forms and manner than explained above.

Article Source: http://www.articlesbase.com/patents-articles/proposed-patent-amendment-rules-2011-and-mandatory-e-filing-of-patent-documents-4447913.html

About the Author

Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.

Patent filing requirements in india

Author: Sudhir Kumar

To minimize the cost of Patent filing and prosecution in India, there are number of things an attorney should take in to account.

In the event you are filing a PCT national phase application, provide your associate in India following information:

(i) Application details including title of the invention, names, addresses and Nationality of the inventors; applicants.

(ii) Complete specification as filed before the International office with claims, drawings and abstract.

(iii) English translation of the International Application if filed and published in language other than English.

(iv) Certified copy of the priority document/s if Form PCT/IB/304 is not available

(v) English translation of the priority documents, if filed and published in language other than English

Priority documents are to be filed in India within 31 months from date of priority, therefore if Form PCT/IB/304 is not available, provide your associate the certified copy of priority documents along with your instruction, so that all documentation can be completed on time.

Where the International application or the priority application are in language other than English, provide an English translation of the same to your associate.

Demand from your associate that power of authority as well as other formal documents be sent to you for execution.

The following requirements can be complied within 6 months from date of filing of the application, if your associate charges for late submission of documents these documents/information can be supplied along with the instructions to file the application.

- Where the Applicant is not the inventor, provide your associate with the Assignment deed or any other document by which the inventor/s have assigned their rights to the Applicant.

- Details and status of corresponding Applications in other countries for the same or substantially the same invention.

It will not only save the filing cost but also will minimize your prosecution cost as you would not be required to file petitions along with official fee for not complying with the formal requirements on time and seeking extension of time.

In India, the Patent rights accrues from the date of publication of application in India, it is therefore advisable to ensure speedy publication of the application. Ordinarily in case of the PCT national phase applications the statutory period of waiting till publication i.e. 18 months is already over, therefore the associate should be advised to expedite the publication by chasing the concerned authorities.

A Patent application in India is not examined unless a request for Examination is filed within 48 months from the date of priority. The ordinary time frame from filing of request to issuance of examination report is 18-24 months therefore it is also advisable to file the request for examination as soon as possible (not to wait for 48 months deadline) to expedite the grant in India.

The time frame for putting the application in order of Grant is 12 months from date of issuance of the examination report, but it is advisable to file the response and initiate the discussion with the examiner as soon as possible to avoid any last minute hassles.

Under the Draft Rules Patent (Amendment) Rules, 2010 following Rules are proposed to be introduced, therefore the descriptions as well as claims shall be provided in a supporting format:

1. All Documents must be filed electronically duly authenticated by Applicant or Agent.

2. Filing of documents except drawings and affidavits:

(i) Typewritten or printed in Hindi or English (unless directed or allowed by Controller) in large and legible characters not less than 0.28 cm in height and 1.5 spacing in between lines

(ii) A-4 paper with margin of 4 cm on top and left side and 3 cm on right and bottom.

(iii) Numbered in consecutive Arabic numerals at centre of bottom of sheet;

(iv) Numbering every fifth line of each page of description and claims at right half of the left margin;

(v) Signature other than in English and Hindi to be accompanied by a transliteration in English or Hindi capital letters;

3. In case of sequence listing of nucleotides or amino acids sequences, same must be filed in computer readable form (ASCII text file) along with fee (not applicable earlier)

4. here online transmission cannot be initiated or could not be completed for whatever reasons, document can be handed over or send by post to Patent office within the stipulated time frame.

5. Amended as well as superseded documents to be submitted electronically. Every new or amended document be marked at Header of documents as Amended along with undertaking that unamended pages are the same as originally submitted.

Article Source: http://www.articlesbase.com/patents-articles/patent-filing-requirements-in-india-973970.html

About the Author

Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.