PATENTS Inventiveness Redefined

Suman Sahai

The recent landmark judgment by the US Supreme Court in KSR vs. Teleflex case, has come at the right time to take care of the incessant granting of patents. The court has sought to redefine inventiveness/obviousness which is one of the core issues of patenting.

Invention as a human activity is much older than the concept of intellectual property. Of late, the concept of “inventiveness ” has come under much discussion with the rate at which patents are being granted all over the world.

Inventiveness in simple terms is defined as the power of creative imagination while a more technical definition for inventiveness would be its not being obvious to a person skilled in the technological field of the invention at the time an invention is made.

Scientists and legal experts have been racking their brains to define this term while granting patents. But often the nuances are ignored through oversight which results in turning out patents which are legally incorrect and which serve to override the efforts and utility of the pre-existing patents.Such has been the case in the US where US Patents and Trademarks Office (USPTO) has been granting patents incessantly till it decided to put a stop to this process. The rapid increase in patenting in the last decade or so is also indicative of a shift in how organisations do research.

The recent landmark judgement by the US Supreme Court in KSR vs. Teleflex case, has

come at the right time to take care of the situation in a bid to redefine inventiveness/obviousness which is one of the core issues of patenting.

This patent case involves computerised adjustable gas pedals instead of a manual pedal.In a conventional automobile, a driver presses the gas pedal to control the quantity of fuel to be delivered to the engine while in the new one there is a computerised pedal for controlling fuel supply to the engine of an automobile.

This advancement first of all is incremental and the type of pedal is apparently no new invention as it points to the same use of a known art. The courts in the US have held for many years that the requirement of inventiveness is not satisfied if there is no change in the respective functions.

Defining obviousness

In its recent decision in KSR v. Teleflex ,the US Supreme Court unanimously rejected the rigid application of the previous "teaching, suggestion, motivation "test (TSM test as used in Graham ’s case, see box)and has clarified confusions prevailing in regard to non-obviousness of an invention with new inputs to look at this issue. The US Supreme Court said that when a court transforms the general principle into a rigid rule (for eg, TSM rule),it limits the obviousness inquiry. A vested interest in patent law and the ease of obtaining patents are at the centre of the case.

The requirement for inventiveness was already there in the patent laws created in the US in 1952.The law states that a patent shall not be granted if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.

The US codified the “obviousness ” test for patentability in 1952 but unfortunately it did

not provide any specific guidelines as to what its meaning was. It was left to the courts to interpret the idea. Since then, the attempts have been quite experimental with different tests over the years, ranging from the requirement that a patentable invention must result from one ’s innate imagination to the more recent Court of Appeals for the Federal Circuit (CAFC)test of ‘teaching, suggestion, or motivation ’ (TSM).

The US Supreme Court has made it clear that the courts must ask whether the improvement is more than the known use of prior art elements according to their established functions. Some of the more important statements of the US Supreme Court in the KSR v. Teleflex case are that:

• An ordinary person has also common sense and creativity to understand the underlying scientific principles.
• The court can look at interelated teachings, market forces, common knowledge skill and creativity of a person of ordinary skill before taking a decision on inventiveness
• in a patent.
• Obviousness can be shown by any need or problem known in the field which provides a reason to combine known elements in the prior art;
• Obvious uses of familiar items, beyond their primary purpose, may be fit together by a person of ordinary skill like pieces of a puzzle, and such a person is not limited only to the primary uses of these items;
• A patent claim can be obvious if the combination of elements was obvious and easy to try; and,
• The combination of old elements with no change in their respective functions according to known methods is likely obvious when it does no more than yield predictable results.
• The new policy rather seems to emphasise that “ordinary innovation ” is not entitled to a patent..

Conclusion

The message conveyed to the outside world through this US court decision is that patents for mere increment tal improvements are to be denied or invalidated. Patents that involve real innovation, cutting-edge ideas, have a spark of genius and pass the possibly strict scrutiny of the patent offices and the courts will only be entitled for patenting.

The decision by the patent offices on raising the standards of inventiveness is a welcome move as it will serve as a lesson for the developing countries. A case in point is the recent move by the Chennai High Court in India which denied the patent over the cancer drug Glivec filed by pharma giant Novartis ’ on the ground of obviousness.. The modification in the new drug was deemed as just an incremental advancement over the pre-existing elements. Though this case is still going on,the verdict so far is laudable in the sense that pharmaceutical companies in order to maintain their competitive advantage in the market would now have to redefine their concept of inventiveness within the purview of the legal status

of patenting.

The other impact of this decision is that there will be less cases of infringement of patents and consequently less appeals.This development at the least calls for a clearer mandate on the legal status of patents.

Nevertheless,this redefining of inventiveness no doubt raises a number of questions.These include:

• Will patents become less or more valuable because of this decision?

• What exactly is a “real innovation ” that should be patentable?
• If only unpredictable development is to be patented how would one know that it was unpredictable?
• Will patent examiners now find more inventions obvious, or refuse the patent, withhold the patents?
• Will more appeals have to be filed?
• What effect will all this development have on the cost and time involved in filing patents?
• Will this make patenting more competitive?

These questions will only be answered on a case-to- case basis with the passage of time.

THE GRAHAM FACTORS

A notable case in the US patent history was the Supreme Court’s attempt to determine obviousness and nonobviousness in Graham et al v. John Deere Co. of Kansas City et al, (1966). These are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at the following three things.

• the scope and content of the prior art;
• objective evidence of nonobviousness; and
• the differences between the claimed invention and the prior art. Along with these, the court outlined examples of factors that show "objective evidence of non-obviousness". They are:
• commercial success in the market; long-felt but unsolved needs; and
• failure of others to solve a particular field.

EPO'S PROBLEM-SOLUTION APPROACH

The basic assumption of the European Patents Office is that every invention is a solution to a technical problem and this promotes the view that the inventive step corresponds to the step from the problem to the solution. The Problem-Solution Approach method comprises of three basic stages.

PRIOR ART

The most relevant and the closest prior art in that particular case had to be defined. Consequent to this, a thorough comparison has to be made between what is being claimed and what is there in the prior art. The differences between the matter claimed and the subject matter in the prior art is very important in deciding the obviousness state of the concerned invention.

THE OBJECTIVE PROBLEM

The identification of a real problem is another major aim. Then, whether the claimed invention solves the problem or not is another major task.

IS THE INVENTION OBVIOUS?

In the last stage, an assessment is made on the basis of existing differences between the most relevant prior art and the invention claimed, that whether the prior art offers a solution to the problem identified in the second invention.