High Court: Simple inventions resulting in unpredictable advantages may be non-obvious

The Delhi High Court, in an order dated 4th November 2022, in Avery Dennison Corporation vs. Controller of Patents and Designs[1], held that “a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious”.

Facts of the case:

The present suit arose out of a PCT application bearing number PCT/US2011/062189 filed in November 2011 by the Applicant which entered the national phase in India on 10th June, 2013. In the First Examination Report (Office Action), the Controller objected to the inventive step of the subject patent application in view of 3 prior arts, namely D1, D2, and D3.

After completion of the proceedings, the Controller issued a refusal order (hereinafter 'impugned order') dated 12th August, 2021 refusing the subject patent application on the ground of lack of inventive step, citing documents D2 and D3 as relevant prior arts.

In an appeal challenging the impugned order of the Controller before the Delhi High Court, the following submissions were made:

The Applicant argued that the subject patent application provided a technical advancement which was achieved by using notches in the manner, shape and orientation as described in the subject patent application.

The Respondent asserted that a mere change in the notch position and shape, not being substantial change, ought to be considered a mere workshop improvement and the same would be obvious to a person skilled in the art. The Respondent relied on the decision in Bristol-Myers Squibb Holdings Ireland Unlimited Company v. BDR Pharmaceuticals International Pvt. Ltd., (2020) SCC. OnLine Del 1700 to support the assertion.

The Respondent further asserted that the subject patent application was an attempt at evergreening a previous patent filed by the Applicant itself (cited as prior art D2 by the Respondent).

Court’s Analysis:

· Test for Inventive Step/Lack of Obviousness:

The Hon’ble Court discussed various approaches and tests for determining inventive step or lack thereof, that have emerged over the years from decisions of courts/authorities as also from examination guidelines of patent offices from different jurisdictions. However, the Hon’ble Court noted that none of the approaches and tests are to be adopted in a straightjacketed manner. Each patent application, depending on the field of technology and the nature of the prior arts may require different approaches or tests to be followed or applied and in some situations, the Court may even adopt an approach of combining more than one test as was done by the UK Supreme Court in Actavis v. ICOS, [2019] UKSC 15. The various tests mentioned by the Hon’ble Court are as follows:

i. Obvious to try approach:

Whether the teachings/solutions proposed in the prior art would be obvious to try and arrive at the subject invention.

ii. Problem/solution approach:

Whether a skilled person can decipher the claimed solution in the light of the closest prior art and the objective technical problem.

iii. Could-Would Approach:

Whether there is any teaching in the prior art as a whole that would and not simply could have prompted a skilled person, with the knowledge of the objective technical problem, to either modify or adapt the closest prior art to arrive at the subject matter of the claims.

iv. Teaching Suggestion Motivation (TSM test):

Whether by Teaching, Suggestion or Motivation from the prior art, an ordinary skilled person can modify the prior art reference or combine prior art references to arrive at the claimed invention. However, the Hon’ble Court noted that the application of this test ought not to be done in a narrow manner as held by the US Supreme Court in the case of KSR International v. Teleflex, 550 U.S. 398 (2007).

The Hon’ble Court further discussed the four-step test to determine inventive step as opined by the England and Wales Court of Appeals in Pozzoli Spa v BDMO SA, [2006] EWHC 1398 (Ch). The said steps are as under:

"1. (a) Identify the notional "person skilled in the art" (b) Identify the relevant common general knowledge of that person;

2. Identify the inventive concept of the claim in question or if that cannot readily done, construe it;

3. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

A further step was added to the above test in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del):

“5. To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindside approach".

· Assessment of inventive step:

The Hon’ble Court, while analysing inventive step, laid down the following fundamental principles:

i. Simplicity does not defeat an invention:

The Hon’ble Court relied upon the findings in Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd, (1929) 46 R.P.C. 23 and Vickers v. Siddell (1890) 7 R.P.C. 292 where the House of Lords while considering simplicity in an invention observed: "If the apparatus be valuable by reason of its simplicity, there is a danger of being misled by that very simplicity into the belief that no invention was needed to produce it. But experience has shown that not a few inventions, some of which have revolutionised the industries of this country, have been of so simple a character that when once they were made known it was difficult to understand how the idea had been so long in presenting itself, or not to believe that they must have been obvious to everyone".

Thus, the Hon’ble Court asserted that simplicity in the invention should not deter the Court from granting a patent. The Hon’ble Court opined that the differences which the Respondent described as `superficial' may appear simple but clearly had an impact on the product concerned. The description of the said differences as superficial would, therefore, be misplaced.

ii. Time gap between the prior art and the subject patent application to be considered while deciding on obviousness:

The Hon’ble Court opined that one of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration. If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages which no one had thought of for a long time, the Court would tilt in favour of holding that the invention is not obvious.

The Hon’ble Court cited Terrel on Law of Patents (16th Edition) and noted the observations made in Brugger v. Medic-Aid Ltd, [1996] R.P.C. 635 delivered by the UK Patents Court, where it was stated: “The fact that a piece of prior art has been available for a long time may indicate, contrary to first impressions, that it was not obvious to make the patented development from it…In other words the age of prior art may be an indication that a development from it is not obvious if it can be shown that the circumstances in the relevant trade were such that a failure of the development to appear earlier is surprising”.

The Hon’ble Court noted that the prior art D2, with priority date of November 1992 belonged to the Applicant and no other prior art was cited between 1992 and 2010 i.e., the subject patent application was filed almost 18 years after the filing of D2. Moreover, the subject patent application provided several advantages over D2 which were clearly outlined by the Complete Specification of the subject patent application.

Further, the Hon’ble Court noted that the corresponding patent applications are granted in the USA, Japan, South Korea and China.

Held:

The Hon’ble Court held that the subject patent application disclosed a technical advancement in comparison with the closest prior art and the features involved an inventive step which were not obvious to a person skilled in the art and therefore, the subject patent application satisfied the test of inventive step. Finally, the Hon’ble Court ordered that the patent should proceed for grant.