What qualifies as an inventive step under the Patents Act?


The Indian Patents Act, 1970 (Act) lays down the grounds on which an invention can be said to become patentable. These grounds are laid down under Section 2(1)(j) of the Act wherein it is said that an invention is any novel product or process which can be used in industrial application and involves an inventive step. Furthermore, these inventions should not be disqualified under Sections 3 and 4 of the Act.

inventive step under the Patents ActThe phrase “inventive step”, as it can be seen here, was first introduced to the definition of an invention in the year 2002 when it was defined as a feature that would make the invention not an obvious one to a person who is skilled in the art. In 2005, this definition of inventive step was amended to now include “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.” under Section 2(1)(ja) of the Act. This is the definition that is followed today.

Person skilled in the art.

As we can see, the definition given above talks about “a person skilled in the art”, but what does this mean?

In order for someone to be classified as a person skilled in the art, there are a number of criteria that have been followed by the courts over the years, some of these are discussed below:

- In the case of Hoffman- La Roche Ltd. & Anr. v. Cipla Ltd., it was held by the court that a person who is said to be skilled in the art has a better understanding of the subject than someone who has average knowledge.

- In Sankalp Rehabilitation Trust v. Hoffmann- Roche it was held by the court that a person skilled in the art is one who “...has read the prior art and knows how to proceed in the normal course of research with what he knows of the state of the art. He does not need to by guided along step by step.”

- It is assumed that a skilled person has all the knowledge with regards to technological advancements, and the requisite skills to perform experiments.

- A person skilled in the art cannot be guided by trial and error. He is only to be guided by the meaning of the prior relevant documents and the naturally flowing interpretation from the same.

- The person skilled in the art should not apply a hindsight approach.

-It is not a compulsion for the person skilled in the art to be an Indian Citizen.

Cases dealing with inventive step

There have been a small number of cases that have deliberated upon what an inventive step is. The most important of these cases, which laid down the main criteria for what can be classified as an inventive step was the case of M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries.

Per this judgment, a test which can be used to see if a document is one which negates the existence of an inventive step has been listed below:

“Had the document been placed in the hands of a competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common general knowledge at the 'priority date', who was faced with the problem solved by the patentee but without knowledge of the patented invention, would he have said, "this gives me what I want?"”

If such a situation arises then there cannot be said to be any inventive step taken. The court went on to note that “It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working inter relation they produce a new process or improved result. Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.”

In order to understand this better, let’s look at an example. If an applicant in a specific field makes an application for a patent with a number of new features, but the same features are such that they are obvious to a person skilled in the art who is also able to combine the features to arrive at the invention, then there cannot be said to be any inventive step. Furthermore, even if the steps are not obvious but they also do not present any technological advancements or economic advancements then the same would still not be said to be an inventive step.


Thus, as we have seen through this article, having an inventive step is one of the three main criteria that need to be satisfied in order for an invention to be patentable. We have looked into the main ingredients of an inventive step which are

- The invention is not obvious to a person skilled in the art.

- The invention presents some technical advancement to the present knowledge, and is of economic significance.

We have looked into who a person skilled in the art is, and the conditions necessary to satisfy the first criteria. We have then looked into the landmark judgment of M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries which continues to lay down the criteria for inventive step to this day.

Author: Ashwin Pandey (intern), in case of any queries please write back us via email at support@globalpatentfiling.com or contact us at Global Patent Filing.

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