The non-obviousness requirement in patent law has been termed “the ultimate condition for patentability”.[1] An invention must be more than just new and useful; it must also be of a significant enough technical advancement to merit the award of a patent.[2]

According to 35 U.S.C. Section § 103, new and useful advancement would be unpatentable “if it is obvious at the time when the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Section 103(a) of the US Patent Act was truly interpreted for the first time by the court in Graham v. John Deere.[3]  The court laid down a three-step analysis for finding whether an invention is obvious – Firstly, the scope and content of prior art, secondly, the differences between the claimed invention and prior art and thirdly, level of ordinary skill in prior art. The Court also laid down certain secondary considerations while considering non-obviousness such as (1) Commercial success, (2) Long felt but unsolved needs (3) Failure of others, and (4) unexpected results.

The Graham judgement laid down a legal framework to analyse the non-obvious standard for the future, but it framed a general standard, and it did not assert the degree of difference needed from the prior art nor did it make clear what amount of creativity would be not obvious to a person having ordinary skill in the art.

The Supreme Court in KSR International Co. v. Teleflex Inc. et al.,[4] proposed several criteria that can be used to reject a patent claim for obviousness such as (1) Combining prior art elements according to known methods to yield predictable results, (2) Simple substitution of one known element for another to obtain predictable results, (3) Use of known technique to improve similar devices (methods, or products) in the same way, (4) “Obvious to try” test i.e., choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, and (5) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.

KSR ruling tried to raise the standard of non-obvious by placing the PHOSITA on a pedestal. This case was responsible in reviving the Graham factors, but it did not limit itself to the factors, thus causing indeterminacy in the application of the Obviousness standard.

In India, Section 2(1)(j) of the  Patents Act 1970 provides that, “invention” means a new product or process involving an inventive step and capable of industrial application. Therefore, an “invention” is patentable only if it satisfies the criteria of patentability being Novelty, Inventive step, and Industrial applicability.

According to Section 2(1)(ja) of the Act inventive step is “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 Act provides that lack of “inventive step” under Section 25(1) (e), Section 25(2) (e)and under Section 64 (1) (f) as a ground for pre and post-grant oppositions and revocation respectively.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries[5] is the landmark case on the interpretation of inventive step in India. The court held 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.  It must produce a new result, or a new article or a better or cheaper article than before.”  The case has been relied upon by the courts till today without any variance.

The court in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd.[6], while determining inventive referred the cases Windsurfing International Inc. v. Tabur Marine Ltd., [1985] RPC 59 and further modifications made in Pozzoli Spa v BDMO SA, [2006] EWHC 1398 (Ch) and laid down the following steps to determine non-obviousness:

“Step No.1 To identify an ordinary person skilled in the art,

Step No.2 To identify the inventive concept embodied in the patent, if that cannot readily be done, construe it.

Step No.3 To impute to a normal skilled but unimaginative ordinary person skilled in the art what was common general knowledge in the art at the priority date.

Step No.4 To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications.

Step No.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”

Moreover, the approach of the Indian Patent Office in assessing the “inventive step” can be derived from the manual of patent practice and procedure, published by the Office.  The manual provides that the obviousness must be strictly and objectively judged. While determining an inventive step, it is important to look at the invention as a whole. Accordingly, the above points need to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have inventive step or not.

The Delhi High Court in the case of Agriboard International LLC. v. Deputy Controller of Patents & Designs[7] held that while rejecting an application for lack of inventive step, discussion on the prior art, the subject invention and manner in which the subject invention would be obvious to a person skilled in the art would be mandatory. Merely arriving at a bare conclusion that the subject invention lacks inventive step would be contrary to Section 2(1)(ja) of the Act itself, is insufficient.

The Court in Avery Dennison Corporation v. Controller of Patents and Designs  [8]while deciding the case discussed various approaches/principles for determining whether the invention is obvious. The court referred to various tests that have been discussed and debated in various jurisdictions, including the UK, EPO, USA etc. to determine inventive step.


The purpose of non-obviousness criteria is to make a balance between incentive to patentee and social cost.[9] Determining Non-obviousness involves assessment of various factors such as Prior Art, Person skilled in the art, relevant date, Knowledge, Jury trial, Objective consideration, and Secondary consideration, etc.[10] Therefore, the non-obviousness standard is difficult to determine and is a crucial one too.


Adv. Ananya Reghu



[3] 383 U.S. 1 (1966)

[4] 550 U.S. 398 (2007)

[5] on 13 December 1978

[6] 2016(65) PTC 1 (Del)

[7] C.A.(COMM.IPD-PAT) 4/2022 dated 31st March, 2022

[8] C.A. (COMM.IPD-PAT) 29/2021

[9] Barton, John H. (2003). “Non-Obviousness”. IDEA 43 (3): 475–506.

[10] Amy L. Landers, Ordinary Creativity In Patent Law: The Artist Within The Scientist, 75 Missouri Law Review (2010)

This blog is for information only and should not be treated as an opinion in the matter.

By |2024-03-14T00:51:46+00:00March 14th, 2024|IP Unplugged|0 Comments

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