Obviousness – A Vague Phantom

14 November 2017

Obviousness is one of the most important tests a patent applicant has to satisfy in order to be entitled to the grant of a patent. Obviousness by its very definition is something plain, straight forward and once realizable. It’s like stating the ‘obvious.’

From Whose Eyes is Obviousness Assessed?

The edifice of the law of obviousness is founded on the hypothetical construct of a “person of ordinary skill in the art”: 1) The person of ordinary skill in the art must belong to the relevant field; 2) The person of ordinary skills must look at the prior art from a position of his personality including the fact that he may or may not be risk taking and is subject to normal biases and prejudices; and 3) That the person of ordinary skills in the art must not be supplied with the solution to the problem.

Thus, the third element is that the obviousness has to be determined as on the priority date and ex-post facto analysis is not permitted.

Approaches to Obviousness

The Indian approach thus far. It was not until the year 2005 that India for the first time defined as to what constitutes an “inventive step” by incorporating a new provision in the definition section of the Patents Act. Section 2(1)(ja) of the Act defines “inventive step” to mean “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.”

Since the year 1972, when the Patents Act, 1970 was brought into brought, there have been a handful of cases in India that have dealt with the obviousness issue extensively.

The United Kingdom approach. In the case of Windsurfing International Corporation v. Tabur Marine Ltd. in the UK, a four-step test for inventive step was given. As the Pozzoli case came along, the four-step test was split into five.

The “long jumper” test. The obviousness test can best be illustrated by the “long jumper” test that visualizes an athlete, a long jumper, who is expected to jump from a baseline to a hypothetical line drawn a few yards ahead. There is an audience that is watching him and will try him predict whether he can leap from the baseline to the forward line. One person in the audience thinks that he will not jump as he knows the athlete and knows that he has recently recovered from a lumbar injury, while another viewer thinks that he is familiar with the determination of the athlete and offers an opinion that the athlete will make it. A third person may be the final judge and may take into account all factors to give a final opinion.

Transposing this situation into the obviousness context, the elements, therefore, are:

(a) Take an athlete and this element is akin to a person of ordinary skills in the art;

(b) The athlete has certain physical and mental strength and this is akin to common general knowledge of the other person of ordinary skills in the art;

(d) The line to which he has to jump is like the inventive concept; and

(e) The question to be asked is whether he will make it.

The audience is the plaintiff’s legal experts (saying that he will not make it) and the defendant’s legal experts (saying that he will certainly make it). The decision maker is the judge.

The Subjectivity of the Obviousness Test

It is well-recognized that while obvious standards around the world involve objectivizing as-much-as can be done, but at the end of the day, the obviousness test is a highly subjective one. In order to reduce the subjectivity in obviousness determinations, Courts have often prescribed the objective indicia or the secondary considerations for determining obviousness. The subjectivity of the obviousness standards has been the explained by Chisum in his treatise on the Law of Patents.

Since the obviousness test is subjective and is largely a question of personal judgment, courts have placed the burden of proving invalidity on the opponent or the defendant and require the said burden to be discharged with clear and cogent evidence.

The Hindsight Bias: Do Not Look from the Eye of the Inventor

A well-recognized concept in psychological research, hindsight bias is the inclination to see events that have already occurred as being more predictable than they were before they took place. The recognition is particularly relevant for obviousness determinations in patent law, since once a product and process have been invented, in hindsight it appears to be obvious. Courts in the United States have repeatedly cautioned against the hindsight. For instance, in the Ortho – McNeil case, the court said that it is impermissible to simply retrace the path of the inventor with hindsight and discount the number and complexity of the alternatives that are faced by the person skilled in the art should he attempt to reach the invention from the prior art.

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