Inventive Step

In one line

An invention must be more than a step a competent person in the field would have taken anyway.

In the wording a student can write in an exam: by section 2(1)(ja) of the Patents Act, 1970, "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both, and that makes the invention not obvious to a person skilled in the art.

Why novelty is not enough

Because anything can be made new by changing something trivial. A chair with four legs is known; a chair with four legs painted blue is new. If novelty were the only test, the register would fill with rights over trivialities and every ordinary act of manufacture would risk infringement.

And because the public gets nothing for a trivial change. The bargain in chapter 20 is a monopoly for a contribution. A change any competent engineer would have made contributes nothing that the public did not already effectively have.

So every patent system has a second, harder test. It is the hardest question in patent law, because it asks a court to decide what somebody would have thought of, after the event, knowing the answer.

The provision itself

Section 2(1)(ja). "'inventive step' means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art".

The definition has two requirements joined by "and".

First requirement, with an internal choice. The feature must involve technical advance as compared to the existing knowledge, or have economic significance, or both.

Second requirement. That feature must make the invention not obvious to a person skilled in the art.

Both must be satisfied. Economic significance alone will not save a change that a skilled person would obviously have made. Technical advance alone will not save one either. The advance or the significance is what the feature must have; unobviousness is what it must produce.

The leading case: Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries

Facts. Both parties made brass and German silver utensils at Mirzapur. In 1951 a partner of Hindustan Metal Industries claimed to have invented a device and method for holding utensils on a lathe, which he said improved convenience, speed, safety and finish over the older method, in which utensils flew off the headstock during manufacture. He filed specifications and claims and obtained a patent under the Indian Patents and Designs Act 1911, effective 13 December 1951, as assignee. In September 1952 he learned that Biswanath Prasad Radhey Shyam was using the same method, served notice, and in 1953 sued for a permanent injunction. The defendant resisted, counter-claimed, and petitioned under section 26 of the 1911 Act for revocation, saying the alleged invention was neither a manner of new manufacture nor an improvement involving any inventive step or novelty, having regard to what was already known or used before the patent. A single judge dismissed the suit and revoked the patent; a Division Bench of the Allahabad High Court reversed.