Introduction
Similar to most fields of law, patent law strives to very carefully strike a balance between encouraging innovation on the one side, and avoiding monopolization of thoughts which are mere improvements over what is already known on the other. For this reason, the patent system, in granting a patent, insists on the presence of an inventive step to an idea or an invention. The inventive step acts as a gatekeeping test, tries to ensure patents granted are for inventions, not minor or routine modifications of already existing inventions.
The definition under the Indian Patents Act of 1970 acts as a starting point, but its application in practice has had most times required judicial precedents around the globe. The two Windsurfing International Inc. v Tabur Marine (Great Britain), and Pozzoli SPA v BDMO SA are landmark cases in the United Kingdom that have provided structured means of handling obviousness, and the significance of their rationale has spilled beyond the borders of the United Kingdom, affecting other nations such as India, and other common law jurisdictions.
This article discusses the meaning and the coverage of the inventive step in Indian law, reviews the Windsurfing and Pozzoli cases, compares their approaches, and determines their applicability to the Indian scenario.
The Meaning of Inventive Step Under Indian Law
The Patents Act of India, 1970, which was amended in 2005 to comply with the obligations of India in the TRIPS Agreement, provides a regulatory type of inventive step in section 2(1)(ja). To be specific, an inventive step is described as:
An attribute of an invention which is a technical progress in relation to the prior art or having economic value or both, and which renders the invention not obvious to an individual skilled in the art.[1]
Key Characteristics of an Inventive Step
- The invention must involve a technical advance and/or have economic value, thereby excluding mere superficial or trivial changes.
- The advance must not be something that is obvious to a person skilled in the art.
The phrase “person skilled in the art” is a legal construct of an individual possessing normal knowledge and skills in the field in question, but lacking any imaginative or inventive powers. This definition of a “skilled person” is an imaginary construct, and so places a restriction. This restriction is meant to ensure that the standard against which invention is measured is not some fantastical construct, which would make patenting obvious advancements impossible, but equally, patenting is unnecessary if an invention was honed in on by experimentation over an extended period of time.
Having a reduced side effects profile than the current treatments is a step towards innovation and can be a new drug formulation. Contrarily, a current product with the only modification being the shape of the product or the shade of the product is not an inventive step, as there is no technical advancement.
The International Perspective
The process of ingenuity is not new to India only. In the U.S., the courts determine the non-obviousness of an invention in accordance with the guidelines established in the case of Graham v. John Deere Co. (1966)[2] which include:
- The scope of the prior art,
- The distinctions between the prior art and the claims, and
- The level of expertise of the art.
The same principle is true for the European Union. The European Patent Office employs the problem-solution approach, which starts with:
- Identification of the closest prior art,
- Stating an objective technical problem, and
- Determining whether the claimed results would obviously be obvious to a person skilled in the art with respect to the problem at hand.
Thus, while the words vary across jurisdictions, the concern in the end is the same: patents ought to guard actual innovation and not be employed to monopolize unimportant or obvious improvements to the invention.
The Windsurfing Test
The Windsurfing test originated in the UK case Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd. [1985]. The case was for a patent on a windsurfing sailboard. The issue was whether or not the inventive concept of the claimed invention was actually inventive or was simply an obvious advance over prior art.
In response, the Court of Appeal set out a four-stage test for determining obviousness:
| Step | Description |
|---|---|
| 1 | Identify the inventive concept in the patent. |
| 2 | Exercise the person skilled in the art in the particular industry. |
| 3 | Identify where the differences lay between what the person skilled in the art knew in the prior art and what was established as the invention. |
| 4 | Decide whether or not those differences would have been obvious to the person skilled in the art or required an inventive step.[3] |
This test was a significant departure from the personal judgments on “common sense” and introduced order into the question of obviousness. It was not, however, devoid of uncertainties.
The Pozzoli Case
The inconsistencies in the Windsurfing policy were resolved in the case of Pozzoli SPA v BDMO SA [2007]. The case was over a patent for packaging compact discs. The subject of the issue at the core was whether or not the invention concerned was actually inventive or simply an obvious variation on established designs.
In his decision, Lord Justice Jacob recognized the utility of the Windsurfing test but attempted to refine it and make it clearer. He paraphrased the test in a new four-step scheme, now known as the Pozzoli Test:
| Step | Description |
|---|---|
| 1 | Identify the hypothetical “person skilled in the art” and their general common knowledge. |
| 2 | Identify the inventive core of the claim in question. |
| 3 | Identify differences between the prior art and the claimed invention. |
| 4 | Ask if the distinctions would be discernible to the person with ordinary skill or if they would require some degree of invention.[4] |
By transferring identification of the person skilled in the art to the first step, the Pozzoli test corrected a main shortcoming of Windsurfing. It provided a logical sequence: identify the person skilled in the art first, then the inventive concept, and finally compare to prior art. This reduced the danger of hindsight bias and made the system more reasonable.
Key Differences Between Windsurfing and Pozzoli
Although both tests seek to provide the same answer to whether an invention contains an inventive step, the Pozzoli approach provides more clarity.
Comparison Overview
| Aspect | Windsurfing Approach | Pozzoli Approach |
|---|---|---|
| Sequence | The inventive idea was determined prior to identifying the skilled person, potentially resulting in circularity. | Starts with defining the skilled person, ensuring logical clarity and avoiding circular reasoning. |
| Clarity | Focus on claims could blur the inventive concept. | Clarifies that the “inventive concept” refers to the essence of the invention, not the literal claims. |
| Practicality | Less structured phases. | Provides a more workable tool for patent offices and courts by clearly distinguishing each phase. |
Essentially, while Windsurfing introduced structure, Pozzoli refined it into a more logical and widely accepted framework.
Application of Pozzoli in India
Although the Pozzoli case is a UK decision, its application has influenced Indian law. Indian courts as well as the Intellectual Property Appellate Board (IPAB) have referred to the Windsurfing/Pozzoli approach many times when establishing the inventive step under Section 2(1)(ja).
Key Indian Case Studies
- Hoffmann-La Roche Ltd. v. Cipla Ltd. (2008, Delhi High Court): This case involved Roche’s patent for the cancer drug Erlotinib. Cipla challenged it on the grounds of obviousness. The court, although not explicitly referring to Pozzoli, applied a similar framework — defining the skilled person (a medicinal chemist), identifying the inventive concept (a selective EGFR inhibitor for cancer therapy), examining prior art, and assessing obviousness. The court held that Erlotinib involved an inventive step.[5]
- Enercon (India) Ltd. v. Aloys Wobben (2011, IPAB): Applied the Windsurfing/Pozzoli test specifically to assess the obviousness of wind turbine technology.[6]
- Allergan Inc. v. Ajanta Pharma Ltd. (2014, Delhi High Court): The court directly used the Pozzoli framework in deciding a pharmaceutical patent case.[7]
- Merck Sharp & Dohme Corp. v. Glenmark Pharmaceuticals (2015, Delhi High Court): The Pozzoli test guided the court’s analysis of the inventive step for an anti-diabetic drug.[8]
Thus, while not binding, the Pozzoli test has become a key reference point in India, bridging the legislative definition under Section 2(1)(ja) and the judiciary’s practical application of the inventive step requirement.
Significance of the Inventive Step Requirement
The requirement of an inventive step is a vital element of patent law for several reasons:
- Ensures True Innovation: It keeps patents reserved for genuine innovation rather than minor modifications, preventing “evergreening” where patents are extended without real innovation.
- Promotes Competition: It protects only meaningful advancements, ensuring public access and healthy market competition.
- Aligns with Global Standards: It harmonizes domestic law with international norms, ensuring Indian patents have global validity and foreign patents face strict scrutiny in India.
Failure to observe this requirement would flood the patent regime with low-value patents, stifling innovation, competition, and access to essential goods, especially in pharmaceuticals.[9]
Critical Analysis
The statutory definition under the Indian Patents Act is broad yet unambiguous, leaving room for judicial interpretation. Incorporating frameworks like the Pozzoli test adds predictability and analytical structure. However, challenges remain:
- Abstract Nature of the Skilled Person: The concept is theoretical, and courts must guard against hindsight bias.
- Pharmaceutical Complexity: Incremental research can yield valuable outcomes, making it difficult to distinguish innovation from obviousness.
Indian courts have generally exercised caution, striving to balance the encouragement of innovation with the societal need for affordable medicines.
Conclusion
The inventive step requirement forms the foundation of modern patent law. It ensures that protection extends only to genuine innovations that advance human knowledge or deliver substantial economic benefit. Section 2(1)(ja) serves as India’s statutory basis, enriched through international jurisprudence.
While the Windsurfing test introduced structure to assessing obviousness, Pozzoli refined it into a logical, coherent framework. Indian courts have followed this reasoning, particularly in cases like Roche v. Cipla, ensuring consistency in evaluating pharmaceutical patents.
The Pozzoli approach has thus helped operationalize India’s inventive step requirement, aligning it with global norms and ensuring patents reward genuine innovation rather than mere variations. Ultimately, this test upholds the integrity of the patent system by protecting true inventors and preventing unwarranted monopolies.
End-Notes:
- The Patents Act 1970, s 2(1)(ja)
- Graham v John Deere Co of Kansas City 383 US 1 (1966)
- Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (CA)
- Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37 (CA)
- Hoffmann-La Roche Ltd v Cipla Ltd (2008) 148 DLT 598 (Del HC)
- Enercon (India) Ltd v Aloys Wobben (2011) IPAB
- Allergan Inc v Ajanta Pharma Ltd 2014 SCC OnLine Del 6568
- Merck Sharp & Dohme Corp v Glenmark Pharmaceuticals Ltd 2015 SCC OnLine Del 13717
- Shamnad Basheer, ‘Obviousness and Inventive Step in Indian Patent Law’ (2005) 1 JIPR 123
