Understanding Inventive Step In Patent Applications

The inventive step requirement is the most subjective and complex of all patentability requirements. Under the Indian Patents Act, the assessment of the inventive step includes two aspects, technical advance or economic significance; and non-obviousness. Inventive step is simply one or a few special features of an invention that involves technical advancement when compared to the already existing knowledge or having more economic significance or in few circumstances both, which makes the invention not entirely obvious to a person skilled in the art. This article is just the continuation of the various stages of patent registration and to check out the previous stages please click here.

To satisfy this requirement, an invention has to:

  • have technical advance over existing knowledge; or
  • have economic significance; and
  • must not be entirely obvious to a person who specifically skilled in the art. All prior art references constitute the knowledge for assessing technical advance as well as non-obviousness.
  • Prior art references may be selected, combined and integrated for making inventive step determination. Obviousness is seen through the eyes of a person with ordinary skill in the art to which the invention belongs. Once the person with ordinary skill with respect to an invention is determined, the prior art references available to the said person on the priority date of the invention are identified and combined. Based on the prior art references on hand, if the person with ordinary skill would have found the invention obvious on the priority date, the invention is considered as obvious and will not meet the inventive step requirement.

From the decisions noted above to determine obviousness/lack of inventive steps the following enquiries are required to be conducted: 

  1. Identify the skills in art by an ordinary person,
  2. Identify the inventive concepts which is embodied in the patent system,
  3. Impute a work which is normally skilled, but it is an unimaginative ordinary person who is skilled in the art of what was common general knowledge in the art at the priority date,
  4. Identify the difference between the work if there is any, between the matter cited and the alleged invention and ascertain whether the differences are actually an ordinary application of law and they involve various different steps which require multiple, theoretical and practical applications,

Decide whether those differences, viewed in the knowledge of the alleged invention, constituted in the steps which would have been obvious to the ordinary person which is skilled in the art and rule out a hind side approach. Thus, obviousness is a question of law based on facts and the burden to prove is on the party which alleges obviousness. however, after the party which alleges makes out a prima facie case of invalidity on the ground of obviousness, the burden shifts on the inventor to disprove.”


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