India’s Intervention on a study on invention step (SCP/22/3) at SCP/22 (July 28, 2015)

Madam Chair,

At the first place, the Delegation of India would like to reiterate its stand that this study (i.e. SCP/22/3) must not be construed as a tool for harmonization of the concept of inventive step.

With respect to a study on the invention step, we would like to state that one of the flexibilities left by the TRIPS agreement is that it did not define the term “inventive step”. In this context, we would like to recall paragraph 4 of the Declaration on TRIPS and Public Health, which in its concluding line declares the right of WTO members that: “In this connection, we reaffirm the right of WTO members to use, to the full, the provisions in the TRIPS Agreement, which provide flexibility for this purpose”. Article 8 of the TRIPS agreement mandates that the member states, may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. Further, the statement by Committee on Economic, Social and Cultural Rights, of 26th November 2001, on Article 15.1(c) of International Covenant on Economic, Social and Cultural Rights reminds us that: “Ultimately, intellectual property is a social product and has a social function”. Therefore, in our opinion, every member state retain its right to define the inventive steps in its own way to utilize the patent system to maximize the benefit to the inventors as well as to the members of the society.

Regarding general description and history of the inventive step, we agree that the inclusion of such a requirement in the patentability criteria is based on the premise that the patent protection should not be given to anything that a person with ordinary skill could deduce as an obvious consequence of what is already known to the public.

Regarding definition of a person skilled in the art (PSIA) and methodologies employed for evaluating the inventive step, the study, thankfully, indicates to the fact that the exact level and subtle nuances of the PSIA’s creative or reasoning capacity in each jurisdiction are not always easy to grasp. In fact, the level of the skilled person may be one of the most important policy issues for inhibiting the entry of frivolous inventions.  Whereas, in many jurisdictions, this man is presumed to be devoid of any inventive skill, the Supreme Court of USA refused to treat him as an automaton and endowed him with a certain modicum of inventive activity, which has been denied in other jurisdictions. The US Supreme Court stated that: “A person of ordinary skill is also a person of ordinary creativity, not an automaton”. In the opinion of the US Supreme Court, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious…….” In the light of teaching of KSR, therefore, it is not difficult to understand the decision of the IPAB, which says that: “He does not need to be guided along step by step. He can work his way through. […] he is neither picking out the ‘teaching towards passages’ like the challenger, nor is he seeking out the ‘teaching away passage’ like the defender”. Also, if the intention of inventive step and sufficiency of disclosure in the patent law is understood, the ground of IPAB decision in distinguishing the skilled person in these two different and yet interrelated context can be understood very clearly. The inventive step developed as an additional layer of novelty and therefore, lowering the level of the skilled person would be detrimental to the growth of industry as, even the frivolous inventions would even get exclusivity. Whereas, the skilled person, in the context of sufficiency of disclosure should be a person who without undue burden of experimentation would be able to translate the specification into the technical reality. The skilled person in the context of sufficiency needs to be educated about the state of art from the teachings of the specification in the interest of transfer of technology. The decision of the IPAB relied on the decision of the KSR (in Sankalp Rehabilitation, Order No. 250/2012). Also, it relied on the decision of the Delhi High Court in ROCHE vs. CIPLA [CS (OS) No. 89/2008 and C.C. 52/2008] while issuing its opinion in Alloys Wobbens (Order No. 123/2013) (both these orders of the IPAB are cited in the study). However, for the sake of clarity, it is needed to be mentioned that Biswanath Prasad Radhey Shyam vs. Hindustan Metal Industries (cited as AIR 1982 SC 1444) laid the foundation of the jurisprudence related to inventive step in India. Paragraphs 25 and 26 are seminal for formulating the concept of inventive step in ROCHE judgment as well as in all the judgments (including those of IPAB) in India:

“The expression "does not involve any inventive step" used in Section 26(1) (a) of the Act and its equivalent word "obvious", have acquired special significance in the terminology of Patent Law. 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 vs. 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 subject, it must not be the obvious or natural suggestion of what was previously known.” (Paragraph 25). “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?" (Encyclopaedia 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?" [Halsbury, 3rdEdn, Vol. 29, p. 42 referred to by Vimadalal J. of Bombay High Court in Farbwrke Hoechst & B. Corporation v. Unichem Laboratories]” (paragraph 26)

Regarding the level of inventiveness (obviousness), the study admittedly stated that the title of this Section is quite misleading and it mainly focuses upon the secondary indices, but does not discuss anything about said “level”. Regarding the alleged “level”, the observation of the Executive Office of the President of USA is very pertinent, which observes that: “Setting an appropriate bar for novelty and non-obviousness is particularly important in a new field; if the bar is not set high (something difficult to do in a new field), firms may well find themselves inadvertently infringing patents, both because of the sheer number of patents and because commercial need is driving many inventors to create similar inventions near-simultaneously (Lemley and Melamed 2013)”. [Patent Assertion and U.S. Innovation, Executive Office of the President, June 2013].

In the KSR, the US Supreme Court states that: “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts”. In [Biogenevs Medev, 1997 RPC, 1] the House of Lords cautions against loosely granted monopolies that: “It is inevitable in a young science, like electricity in the early nineteenth century or flying at the turn of the last century or recombinant DNA technology in the 1970s, that dramatically new things will be done for the first time. The technical contribution made in such cases deserves to be recognised. But care is needed not to stifle further research and healthy competition by allowing the first person who has found a way of achieving an obviously desirable goal to monopolise every other way of doing so. (See Merges and Nelson, On the Complex Economics of Patent Scope (1990) 90 Columbia Law Review 839)”.

Therefore, above said reports/decisions point to one thing, that is, the question of level of standards for determining the most fundamental aspects of the patentability. We therefore, reiterate that the TRIPS agreement allows the member states to determine that level and apply it in the domestic legislations so that an appropriate balance be achieved to balance the interest of the inventor vis-à-vis the interest of the society.

Thank you, Madam Chair.