INTELLECTUAL PROPERTY RIGHTS LAW PROJECT PAPER

TOPIC: CRITIQUE OF POZZOLI CASE (INVENTIVE STEP TEST) AND

COMPARISION WITH INDIAN LAW

VIDIT HARSULKAR

ID NO: 2015-021

THIRD YEAR
INTRODUCTION
Section 2(i)(j) of the Indian Patent Act, 19701 defines “invention” to mean a new product or
process involving an “inventive step” and capable of industrial application. The term “inventive
concept” is defined in section 2 (1)(a) to mean “a feature of an invention....not obvious to a
person skilled in the art”. The term “obvious” and the term “a person skilled in the art” are not
defined in the Act, though the term “person interested” is defined in the Act to include a person
engaged in, or in promoting, research in the same field as that to which the invention relates.

The UK patent Act 1977 also contains similar definitions. Sections (1) (b) of that Act provides
that a patent may only be granted for an invention which involves an ‘inventive step’. Section 3
thereof provide that an ‘invention’ should not be taken to involve ‘an inventive’ if it is ‘obvious’
to a person skilled in the art having regard to any matter which forms part of ‘state of art’.

In US, 35 U.S.C 103 is relevant for consideration of the subject. When a subject matter could be
granted a patent the question whether the ‘inventive step’ leading to an ‘invention’ under the law,
contains a feature which is ‘obvious’ to a ‘person skilled in the art’, has to be considered. It is to
that aspect of the matter, we shall address our attention now. We have considered earlier as to
what is non-obvious subject matter to be patented; and needless to say, they are both inter-
related.

Section 25/section 64 of the Act

In this connection it is relevant to note Section 25(1)(e) and Section 64(1)(f) of the Act. While
the former deals with the issue of „obviousness‟ as a ground of opposition to the grant of patent
in opposition proceedings, the latter deals with revocation of patent in revocation proceedings
(after the grant of patent) for obviousness. Under the former Section, the expression ‘publicly
known or publicly used’ do not appear. Inventiveness for the purpose of this Section is to be
judged only having regard to the publication specified therein. There is no such restriction under
the later section. In the other words, no obviousness under the later provision compares the
relevant invention with the prior art as whole, but both the provision mainly attracts the test of
‘obviousness’.

1
Hereinafter referred to as the Act.
In dealing with this question, two aspects have to be considered:

(1) What is obvious;

(2) To whim must the invention be obvious and what is the state of the art to be taken into
account. Taking the first question for consideration, the US Supreme Court in Graham v. John
Deere2 considered whether a device designed was obvious at the time of claim for invention,
petitioner contended that this new arrangement was not disclosed in the prior art. It was held that
the mere shifting of the wear point to the heel of the hinge plate from the stirrup of the Glencoe,
itself a part of the hinge plate, present no operative mechanical distinction, much less non-
obvious difference and that the modification was within the capabilities of one skilled in the art.

The court then set out a tripartite test for obviousness:

(1) The scope and content of the prior art;

(2) The differences between the prior art and the claimed invention; and

(3) The level of skill in the pertinent art.

The matter of obviousness is to be judged by reference to the state of art in the light of all that
was previously known to the persons well versed in that art derived from experience of that was
practically employed as well as from the content of previous writing, specifications, text books
and other documents, that is, to be compared the relevant invention with prior art as a whole.

AIM AND OBJECTIVE

The aim of this research is:-

- To analyse the legislative framework governing inventive step concept in India and UK.
- To trace the development of judicial pronouncements and various tests laid down by the
court in determining inventive concept.
- To compare the inventive step concept laid down in Pozzoli case3 and tests adopted by
the courts in India.

2
Graham v. John Deere Co., 383 U.S. 1 (1966)
3
Pozzoli SpA v. BDMO SA (2007) F.S.R 37
 - To conclude whether these tests sufficiently remove external errors like hindsight bias

RESEARCH METHODOLOGY
“DESCRIPTIVE” Method of Research” has been relied upon for conducting the research given
the availability of resources and time. The researcher has relied mainly upon secondary sources,
including books available in Library, Databases, Journals, Articles and Newspapers.

RESEARCH QUESTIONS
1. What changes were brought about in the Pozzoli case with reference to previous tests laid
down by the courts to determine inventive step in UK?

2. Whether the Pozzoli approach was capable of removing the hindsight bias that made it easier
to invalidate patents?

3. Whether the Pozzoli approach is a refined extension of the problem- solution approach
adopted by the EPO?

4. What is the inventive step approach adopted by India and whether it needs reformulation in
the light of the tests applied in other jurisdictions?

RESEARCH HYPOTHESIS
The researcher has made precise assumption in the commencing of the scutiny undertaking that
are going to be tested across the undertaking, they are the following.

1. The test laid down in Pozzoli case4 for the determination of non-obviousness is the most
appropriate test as compared to India and European patent regime.
2. The non-obviousness requirement in India is still litigated hence the application of UK
approach will be more favourable, a solution in such cases.

4
Supra Note 3
STATEMENT OF PROBLEM

This Research aims critically analyse the Pozzoli5 decision with reference to different tests laid
down in other jurisdictions. Since the inventive concept in India has also seen divergence from
case to case, a comparison is drawn between the Pozzoli6 approach and tests in India.

SCOPE AND LIMITATION

The scope of this research is limited to the approach followed in UK and India with reference to
the US position only in certain sections.

LITERATURE REVIEW
BOOKS AND ARTICLES

1. VK Ahuja, Law Relating To Intellectual Property Rights (1st Edition, Lexis Nexis, 2010)

This book discusses and analyses the law on intellectual property rights in India. The book also
discusses know-how and licences to give an overall picture of the law on intellectual property
rights. A summary of all the international agreements, treaties and conventions on the subject
has also been provided.

2. Miller, Burkill, Birss and Campbell, TERRELL ON THE LAW OF PATENTS (17th edn.,
Sweet & Maxwell 2011)

This book has discussed the UK position laid down in the Windsurfing and Pozzoli case in
chapter 12. This book has given a detailed analysis on these cases.

3. Kalyan C Kankanala, Arun K. Narsani and Vinita Radhakrishnan, INDIAN PATENT LAW
AND PRACTICE (1ST edn., Oxford University Press, 2010)

This book discusses the patent system in India and has a comprehensive chapter on non
obviousness/ inventive step in India with the most recent case decisions in Chapter 2.4 of the
book.

5
Id.
6
Id
4. R.A. Balk, "New Creations? Commentary" [January-February 1991] Hastings Centre Report
33.

The researcher will refer to this article to examine the distinction between the novelty and non-
obviousness criteria. Also this article gives a deep insight into the concept of non obviousness in
the United States.

5. J. Bochnovic, "Invention/Inventive Step/Obviousness" In: "Patent Law of Canada” G.F.

Henderson et al. eds. (Carswell: Toronto, 1994) at p. 41

This article deals with the UK and European position on non obviousness and has detailed
explanation on the problem solution approach.

6. Glynn S. Lunney, Jr. & Christian T. Johnson, Not So Obvious After All: Patent Laws
Nonobviousness Requirement, KSR, And The Fear Of Hindsight Bias 47 Ga. L. Rev. 41 (2012)

This article deals with the historical development of non obviousness criteria in the United States
and also examines the Graham test, TSM test and KSR test on the touchstone of hindsight bias.

7. J-M. Claydon, "The Question of Obviousness in the Windsurfers Decision" [1985] 8

EIPR218.

This article deals with the detailed analysis on the Windsurfing decision and makes it easier to
compare the Pozzoli approach with it.
CASES

1) ACTAVIS UK LIMITED V. NOVARTIS AG

The Court examined the case based on tests laid down by the EPO and in the Pozzoli case on the
patent over a sustained release formulation of fluvastatin, consequently in which patent was not
granted on he ground that it was obvious. Jacob LJ favoured English jurisprudence over the
"two-bite" approach allowing for consideration of obviousness under the EPO problem/solution
approach. In Jacob LJ's opinion, the problem/solution approach does not adequately deal with
cases where the invention involves perceiving that there is a problem.

2) ASTRAZENECA CANADA INC V. MYLAN PHARMACEUTICALS ULC

The court in this case held that Pozzoli approach cannot be applied in all cases. It limited the
scope of Pozzoli approach in the pharmaceutical sector.

3) BISHWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL INDUSTRIES.

In this case the Supreme Court had held that in order fore the improvement to be patentable it
had to be more than a mere ‘workshop improvement’. Further To fulfill the criteria of inventive
step the combination or improvement should either result in a new process or improved result or
should be cheaper.

4) KSR V. TELEFLEX

The United States Court of Appeals for the Federal Circuit re fixed the bar on patentability. That
case revolved around the question of obviousness and stated that the Court must ask whether the
improvement is more than the predictable use of prior art elements according to their established
functions. It stated that the question is not as to the combination of obviousness of the patent but
as to the combination of obviousness of a person of ordinary skill in the art.
5) WHEATLEY V. DRILLSAFE

The case related to a threaded hole cutting device, whose patent was invalidated on the ground of
common general knowledge and revoked but on appeal the patent was held to be valid.

6) POZZOLI SPA V BDMO SA & ANOR

The court reformulated the 4 test laid down in windsurfing case determining the criteria of non-
obviousness.

7) WINDSURFING INTERNATIONAL INC V. TABOR MARINE LTD.

A four step test was laid down for determining the criteria of non obviousness.

TENTATIVE SCHEME OF PROJECT

- INTRODUCTION TO NON-OBVIOUSNESS:
 SECTION 25/SECTION 64 OF THE INDIAN ACT

- POZZOLI SPA V BDMO SA & ANOR:

 BACKGROUND

- APPROACH FOLLOWED IN POZZOLI CASE

 STRUCTURED APPROACH FOLLOWED

- DEFINITION
 THE PERSON SKILLED IN THE ART
 COMMON GENERAL KNOWLEDGE
 HINDSIGHT
- INVENTIVE STEP CONCEPT IN INDIA

- IMPACT OF INVENTIVE STEP TEST IN POZZOLI CASE AND COMPARISON

WITH DIFFERENT LAWS
 US
 EPO

- COMPARISON WITH INDIAN LAW

- ADVANTAGES/DISADVANTAGES OF THE STRUCTURED APPROACH IN

POZZOLI CASE

- CONCLUSION AND SUGGESTIONS

- REFERENCES