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NATIONAL LAW SCHOOL OF INDIA UNIVERSITY BANGALORE

A RESEARCH PROJECT ON

CRITIQUE OF POZZOLI CASE (INVENTIVE STEP TEST) AND COMPARISION WITH INDIAN LAW
(UNDER THE SUPERVISION OF Prof. T. RAMAKRISHNA)

A PROJECT FOR- INTERNATIONAL AND COMPARITIVE OF INTELLECTUAL PROPERTY RIGHT

SUBMITTED TO: Prof. Dr. T. RAMAKRISHNA Faculty for Intellectual Property Rights NLSIU, Bangalore

SUBMITTED BY: Abhishek Bhargava I.D. No. 553 LL.M. [Business Laws]

Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

ACKNOWLEDGEMENT
I would like to express my gratitude to all those who gave me the opportunity to complete this project. I want to thank the faculty who gave me the permission to commence this project. I am deeply in debt to my teacher of International and comparative law of intellectual property rights; Prof. Dr. T RAMAKRISHNA, whose stimulating suggestions and encouragement helped me in the research and writing of this project. I want to thank him for his help, support, interest, and valuable time that he gave to me. Also I would like to extend my sincere gratitude to Ms. Aswathy Ashok, who guided us at every point during the research of this project.

Last but not the least; I want to thank my parents who have supported me to make my project successful.

ABHISHEK BHARGAVA I.D. No. 553 LL.M. (Business Laws) Batch: 2013-2014 (One Year Course) National Law School of India University Bangalore

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

TABLE OF CASES

1 2 3 4 5 6 7 8 9 10 11

ACTAVIS UK LIMITED V. NOVARTIS AG

ASTRAZENECA CANADA INC V. MYLAN PHARMACEUTICALS ULC BISHWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL INDUSTRIES. BELOIT TECHNOLOGIES INC V. VALMET PAPER MACHINERY INC HABERMAN V. JACKEL INTERNATIONAL

KSR V. TELEFLEX, ROCHE V. CIPLA.

PANDUIT CORPN V. BAND-IT- CO LTD POZZOLI SPA V BDMO SA & ANOR WHEATLEY V. DRILLSAFE WINDSURFING INTERNATIONAL INC V. TABOR MARINE LTD.

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

TABLE OF CONTENTS

1. INTRODUCTION TO NON-OBVIOUSNESS:
SECTION 25/SECTION 64 OF THE INDIAN ACT

6-7

2. METHODOLOGY
AIM AND OBJECTIVE: RESEARCH METHODOLOGY RESEARCH HYPOTHESIS STATEMENT OF PROBLEM: SCOPE AND LIMITATION

8-9

FOOTNOTING 3. POZZOLI SPA V BDMO SA & ANOR:


BAKCGROUND

10 10-11 11-13

4. APPROACH FOLLOWED IN POZZOLI CASE


STRUCTURED APPROACH FOLLOWED:

5. DEFINITION:
THE PERSON SKILLED IN THE ART COMMON GENERAL KNOWLEDGE HINDSIGHT

6. INVENTIVE STEP CONCEPT IN INDIA 7. IMPACT OF INVENTIVE STEP TEST IN POZZOLI CASE AND COMPARISON WITH DIFFERENT LAWS

13-14 14-15

EPO 8. COMPARISON WITH INDIAN LAW 9. ADVANTAGES/DISADVANTAGES OF THE STRUCTURED APPROACH IN POZZOLI CASE

US

16 17

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

10. CONCLUSION AND SUGGESTIONS 11. BIBLIOGRAPHY

18 19-21

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

1. INTRODUCTION TO NON-OBVIOUSNESS:
Section 2(i)(j) of the Indian Patent Act, 19701 defines invention to mean a new product or process involving an inventive step and capable of industrial application. The term inventive concept is defined in section 2 (1)(a) to mean a feature of an invention....not obvious to a person skilled in the art. The term obvious and the term a person skilled in the art are not defined in the Act, though the term person interested is defined in the Act to include a person engaged in, or in promoting, research in the same feild as that to which the invention relates.

The UK patent Act 1977 also contains similar definitions. Sections (1) (b) of that Act provides that a patent may only be granted for an invention which involves an inventive step. Section 3 thereof provide that an invention should not be taken to involve an inventive if it is obvious to a person skilled in the art ha ving regard to any matter which forms part of state of art.

In US, 35 U.S.C 103 is relevant for consideration of the subject. When a subject matter could be granted a patent the question whether the inventive step leading to an invention under the law, contains a feature which is obvious to a person skilled in the art, has to be considered. It is to that aspect of the matter, we shall address our attention now. We have considered earlier as to what is non-obvious subject matter to be patented; and needless to say, they are both inter-related.

Section 25/section 64 of the Act In this connection it is relevant to note Section 25(1)(e) and Section 64(1)(f) of the Act. While the former deals with the issue of obviousness as a ground of opposition to the grant of patent in opposition proceedings, the latter deals with revocation of patent in revocation proceedings (after the grant of patent) for obviousness. Under the former Section, the expression publicly known or publicly used do not appear. In ventiveness for the purpose of this Section is to be judged only having regard to the publication specified therein. There is no such restriction under the later section. In the other words, no obviousness under the later

Hereinafter referred to as the Act.

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law
provision compares the relevant invention with the prior art as whole, but both the provision mainly attracts the test of obviousness .

In dealing with this question, two aspects have to be considered: (1) what is obvious; (2) to whim must the invention be obvious and what is the state of the art to be taken into account. Taking the first question for consideration, the US Supreme Court in Graham v. John Deere 2 considered whether a device designed was obvious at the time of claim for invention, petitioner contended that this new arrangement was not disclosed in the prior art. It was held that the mere shifting of the wear point to the heel of the hinge plate from the stirrup of the Glencoe, itself a part of the hinge plate, present no operative mechanical distinction, much less non-obvious difference and that the modification was within the capabilities of one skilled in the art. The court then set out a tripartite test for obviousness: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; and (3) the level of skill in the pertinent art. The matter of obviousness is to be judged by reference to the state of art in the light of all that was previously known to the persons well versed in that art derived from experience of that was practically employed as well as from the content of previous writing, specifications, text books and other documents, that is, to be compared the relevant invention with prior art as a whole.

Graham v. John Deere Co., 383 U.S. 1 (1966)

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

Aim and objective:


The aim of this research is: To analyse the legislative framework governing inventive step concept in India and UK. To trace the development of judicial pronouncements and various tests laid down by the court in determining inventive concept. To compare the inventive step concept laid down in Pozzoli case3 and tests adopted by the courts in India.

To conclude whether these tests sufficiently remove external errors like hindsight
bias.

Research Methodology
DESCRIPTIVE Method of Research has been relied upon for conducting the research given the availability of resources and time. The researcher has relied mainly upon secondary sources, including books available in Library, Databases, Journals, Articles and Newspapers.

Research questions

1. What changes were brought about in the Pozzoli case with reference to previous tests laid down by the courts to determine inventive step in UK? 2. Whether the Pozzoli approach was capable of removing the hindsight bias that made it easier to invalidate patents? 3. Whether the Pozzoli approach is a refined extension of the problem- solution approach adopted by the EPO? 4. What is the inventive step approach adopted by India and whether it needs reformulation in the light of the tests applied in other jurisdictions?

Pozzoli SpA v. BDMO SA (2007) F.S.R 37

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

Research hypothesis

The researcher has made precise assumption in the commencing of the scutiny undertaking that are going to be tested across the undertaking, they are the following. The test laid down in Pozzoli case4 for the determination of non-obviousness is the most appropriate test as compared to India and European patent regime.

The non-obviousness requirement in India is still litigated hence the application of


UK approach will be more favourable, a solution in such cases.

Statement of problem:
This Research aims critically analyse the Pozzoli 5 decision with reference to different tests laid down in other jurisdictions. Since the inventive concept in India has also seen divergence from case to case, a comparision is drawn between the Pozzoli 6 approach and tests in India.

Scope and limitation

The scope of this research is limited to the approach followed in UK and India with reference to the US position only in certain sections.

Format of Footnoting and Citation Style:

A uniform mode of citation has been followed throughout the project. The NLSIU mode of citation has been used in this project.

4 5

Supra Note. 3. Id. 6 Id.

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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

2. POZZOLI SPA v BDMO SA & Anr7

Background: Since the time being various multi-step examinations have been adopted for the determining the criteria of non-obviousness. Considering this UK courts have been following a fourstep Windsurfing test more than 20 years. This test gives a central role to a n otional person accomplished in the art who is well aware of everything in the state of the fine art and who has the skill to make routine workshop events but not to exercise inventive ingenuity or contemplate laterally a nerd in the words of one judg e. In a present UK Court of Appeal case, this bedrock of UK patent case has been reformulated in a move that might have drastic impact for how inventions are scrutinised at both the application and litigation stage. The dispute in the case of, Pozzoli SPA v BDMO SA 8 and others, arose after Pozzoli accused BDMO of infringing its patent for a storage case capable of grasping several CDs in a space effectual manner. As a result, BDMO countered that it didnt infringe, and they contested that the patent was obvious and consequently invalid and not capable of being enforced anyway. At the High Court previously, the judge reinforced alongside BDMO, resulting Pozzoli to appeal. Though, the Court of Appeal selected that the Windsurfing examination demanded something of a spring clean to make the procedure of ascertaining inventiveness simpler. Specifically, the act of the person skilled in the art was reinforced by altering the early two inquiries, so the identification of this person is the first thing the enquirer has to do, and the non obviousness is determined through the skilled persons eye.

7 8

Supra Note. 3. Id

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3. APPROACH FOLLOWED IN POZZOLI CASE

Structured Approach followed: A structured approach to determining the issue of obviousness, which has frequently been followed and applied in subsequent cases, is provided by the four question posed by Oliver L.J.. in Windsurfing International Inc V. Tabor Marine Ltd .9 After observing the test of obviousness the jury set out a four stage test. This was subsequently reviewed by the Court of Appeal in Pozzoli v BDMO SA 10 and restated as follows: (1) (a) Identify the notional person skilled in the art (b) Indentify the relevant common general knowledge of that person; (2) indentify the inventive concept of the claim in question or if that cannot readily be done, construe it; (3) Identify what, if any, differences exist between the matter cited as forming part of the state of art and the inventive concept of the cla im or the claim as construed; (4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

The court is not obliged to follow or apply Windsurfing/Pozzoli analysis; ultimately the sole issue is that posed by section 3. 11 However the court of appeal observed in Wheatley v Drillsafe 12 that failure to follow its structured approach had led the judge below into the error of applying hindsight reasoning and failing to distinguish what was known from what was common general knowledge.

It will be noted that in the final step, the statutory test for inventive step is restated. The first three steps are essentially for the purpose of putting the court in the right frame of mind (they

[1985] R.P.C 59 at 71 and 73-74 [2007] F.S.R 37 at paras 14-23 Instance v. Denny [2002] R.P.C 14 at para. 17 ; Smithkline Beecham Plc v Apotex Europe Ltd [2005] F.S.R

10

1111

23 at paras 34-35
12

[2001] R.P.C at Para.45, 54, 72

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merely orientate the tribunal properly 13) as necessary preparation for the final questionwhich is the only question-which is, is it obvious?14

4. Definition:

The person skilled in the art The person skilled in the art is relevant to a finding both of obviousness and anticipation. He is assumed to be the notional addressee of the patent. Description of him abound in patent law. According to Buckley LJ as cited with approval by Lord Bingham in Synthon15, he is not a person of exceptional skill and knowledge , that is he not expected to exercise any invention nor any prolonged research, inquiry or experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trails and to correct obvious errors in the specification if a means of correcting them can readily be found 16 Moreover it was also laid down that he is neither a mechanical genius, nor is he a mechanical idiot 17

Common General Knowledge The obviousness of an invention is measured against what will be obvious to a person skilled in the art: the same notional individual who is central to the test for anticipation. He is deemed to have common general knowledge in the field to which the invention relates. This has come to be called the common general knowledge of the art. Common general knowledge means the information which, at the date of patent question, is common knowledge in the art or science to which the alleged invention relates, so as to be known to duly qualified persons engaged in that art or science. 18, in other words, it is part of the mental equipment necessarily for competency in that art or the science concerned, such that every worker in the art may be expected to have as part of his technical equipment. 19

13 14 15

Virgin v. Premium Aircraft interior [2010] R.P.C 8 at para.115; Actavis v. Novartis [2010] FSR 18 at para.55 Degussa-Huls SA v. The Comptroller-General of Patents [2005] R.P.C 24 at para.24. SYNTHON v SMITHKLINE BEECHAM [2005] UKHL59 Valensi v. British Radio Corportation [1972] Gillette Safety Razor Co v. Anglo-American Trading Co Ltd [1913] British Thomsom v. Stonebridge (1916) 33 R.P.C 166 at 171. Automatic Coil v. Taylor Electrical (1944) 61 R.P.C 41 at 43.

16 17 18 19

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Hindsight Sometimes an invention seems obvious in hindsight. It may be easy to retrace the step leading from the invention to the prior art, and to show that, since each step leading to the invention to the prior art, and to show that, since each step was a simple one, there was no inventive step. This is particularly the case where the problem solved is obvious or the technological involved is not particular involved is not particularly complex. Often the court will be tempted to use hindsight when answering the fourth Windsurfing question as to whether the step from the prior art to the invention was obvious. In this case, the court may find the step obvious because the destination, that is, the invention is already known. However, such ex post facto reasoning should be avoided. 20 It is common ground that obviousness in hindsight will not lead to a finding of invalidity. 21

More generally, the common general knowledge permeates everything that is required of the skilled person: for example, in reading and understanding the patent, in understanding and reacting to the cited prior art or in bringing his mind to bear upon any technical problem which arises. 22

5. INVENTIVE STEP CONCEPT IN INDIA

Inventive step test is the toughest and ambiguous patentability requirement. An invention should posses an inventive step in order to be eligible for patent protection. Section 2(1)(ja) of the Patent Acts defines inventive step as a feature of an invention that involve 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. As per the section, an invention will have inventive step only if it satisfies two conditions. First, the invention should be technically advance in the light of the prior art or should have economic significance. And, second, the invention should be non-obvious to the person with ordinary skilled in the art in the light if prior art. The act does not define technical advance or economic significance, and does not provide guidelines for determining non-obviousness of an invention from the point of view of a person with ordinary skill in the art. However, the
20 21 22

Panduit Corpn v. Band-It- Co Ltd [2003] FSR 127 Beloit Technologies Inc v. Valmet Paper Machinery Inc [1997] RPC 705 Kavanagh Balloons v Cameron Balloons [2004] R.P.C 5 at para.33.

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courts have, thought various decision, laid down some guidelines for determining nonobviousness of an invention.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries , The patent in the case related to a means for holding utensil for turning purposes. 23 A preferred feature of the invention, disclosed in the patent states that the pressure end of the spindle was rotatable mounted and for that purpose it comprised and independent piece engaged by a hollowed end in a spindle; said hollowed end is preferably fitted with ball bearing to enable the said independent piece to revolve with friction when it was in the contractual relationship with the utensil.24 The patent disclosed that the independent piece had a forward pointed end or a blunt end, which was firmly held against the utensil. 25 The validity of the patent was challenged on the ground of lack of novelty and inventive step.

The Courts stated its analysis of inventive step by stating that in order to be patentable, an improvement on something known before, or a combination of different matter already known, should be something more than a mere workshop improvement , and must independently satisfy the test of invention or the inventive step. 26 The Supreme Court further said that obviousness has to be strictly and objectively judged and further recognised that obviousness is something that is a natural suggestion of what was previously known.

This test of obviousness was reinforced by the Single Judge bench of High Court of Delhi in Roche v Cipla.27 In contrast, the Intellectual Property Appellate Board invalidated certain patents and gave contradictory approaches to what ought to be the test of obviousness in Enercon decisions. It was held that test of 'obviousness' in India is a different one from that are applied in USA and UK. In other instance the Intellectual property appellate board applied the Windsurfing/Pozzoli tests of the English courts (discussed below). The standard of obviousness in India is currently being litigated before various forums in India, such as the Patent Office, the Intellectual Property Appellate Board, the various High Courts and the Supreme Court. In fact, the Supreme Court in the Novartis case devoted several days of
23 24 25 26 27

AIR 1982 SC 1444. Id Id id 148 (2008) DLT 598

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hearing on the interpretation of Section 2(1)(ja) and it is anticipated that the judgment will shed light on the standard of obviousness to be adopted in India.

6. IMPACT OF INVENTIVE STEP TEST IN POZZOLI CASE AND COMPARISON WITH DIFFERENT LAWS

US Approach: Interestingly; Pozzoli case has come very near to a highly significant US Supreme Court Case, KSR v Teleflex28, which also determined the concept of non-obviousness. The US approach of assessing inventive step or the test of non-obviousness was previously settled in a landmark case of Graham v. John Deere29 decision in 1960s. While this case laid down the basis of all US inventive step decisions since its inception, it has been highlighted by the teaching, suggestion, or motivation (TSM) test which basically requires that there must be a specific indication to the skilled person why separate documents should be combined to prove obviousness. In KSR the Supreme Court stated that the TSM test should not be applied rigidly, a move which brings the task of assessing inventive step back to the expansive and flexible approach originally provided by Graham. Perhaps the most groundbreaking aspect of KSR is the additional attributes that have been bestowed upon the skilled person, though. He/she is now not an automaton but a person of ordinary creativity. Contrast this with the UK skilled persons utter lack of creativity. What ordinary creativity is will inevitably be argued in the future, but KSR makes it clear that the person would at least have an awareness of design needs and market pressures, or whether it would be obvious to try a particular combination to arrive at an invention when a limited number of options are available to him/her. While considering this, it could simply mean that US courts while assessing inventive step will find it easier to invalidate patents on ground of obviousness. It may also bring the US closer to the European approach to assessing inventiveness of combination patents, which requires a surprising beneficial effect derived from the combination of previously known features. The take-home message from both decisions is that inventors and patent attorneys will have to work closely together to draft clear and comprehensive patent applications that really sell their invention. This should give applicants the best chance of

28 29

550 U.S. 398 (2007) Supra Note. 2.

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getting them patented, and increases the likelihood they will withstand any future litigation. Regardless getting an application right in the first place can avoid problems in years to come.

EPO (Problem/Solution approach) to obviousness It has been suggested that the third step of PSA is more or less equivalent to the fourth step in Windsurfing/Pozzoli. But it has also been suggested that there may be a number of problem with PSA, which do not arise with the Windsurfing/Pozzoli test. For example, the object ive technical problem may not be the same problem which the patentee has set out to solve. It may be reformulated by the court to match the claimed solution. However, in so doing the court may be guilty of hindsight or, indeed, of assuming there has been an inventive solution to a problem, although the problem itself might be illusionary. Alternatively, the inventive step might actually lie in indentifying the problem to be solved, although once indentified the solution itself might be obvious, as was the case in Haberman v Jackel30 International. Employing the PSA test in Haberman, there would almost certainly be finding of obviousness, but not necessarily employing windsurfing/Pozzoli test. However, there may be times when the PSA is a useful approach to take.

7. COMPARISON WITH INDIAN LAW

As it can be seen from the decision of the courts, inventive step determination is fraught with ambiguities and is not straightforward. An invention will not satisfy the inventive step requirement if the invention is within the probable capacity or an ordinary mechanic or a person skilled in the art. In other words, an inventive step will exist in an invention only if a person skilled in the art would not be able to make the invention based on the prior art on the priority or filing date. However, if the elements in the prior art can be combined by a person skilled in the art to make the invention without exercising inventive faculty or imagination, the invention would lack inventive step.

Combining various elements in different in different prior art references based on hindsight would amount to mosaicking and that would not negate inventive step of an invention. Working backward from the invention and finding element of the invention in prior art is not permitted for performing inventive step analysis. Having said that, incorporating elements of
30

(1999) FSR 683.

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common general knowledge in the prior art to make a product would not give rise to inventive step. The following steps are generally followed for analysing inventive step: 1) Determination of the scope and content of the prior art to which the invention pertains; 2) Assessment of the technical advance or economic value of the invention; 3) Assessment of the difference between the combined prior art and the invention; 4) Definition of the technical problem solved by the invention; and 5) Determination of whether a person skilled in the art deems the invention obvious in the light of combined prior art The inventive step analysis is fraught is fraught with multiple ambiguities and is considered by scholars to be more vague than metaphysics. Ambiguities with respect to aspects such as identification of relevant prior art, combining of prior art, determining level of ordinary skill in the art, and assessing differences between invention and prior art, to ascertain obviousness makes inventive step determination difficult and subjective

8. ADVANTAGES/DISADVANTAGES OF THE STRUCTURED APPROACH IN POZZOLI CASE:


Advantages: The Court of Appeal in Wheatley v Drillsafe Ltd 31, in overturning the decision of the Patents Court on obviousness, highlighted how a failure to use the structured Windsurfing approach to assessing obviousness had led the Patents Court to fall into the trap of using hindsight and to fail to distinguish what was known from what was common general knowledge.

Disadvantages: The limit on Pozzolis structured approach in pharmaceutical cases 32, in the case of Astrazeneca Canada Inc v Mylan Pharmaceuticals ULC anastrozole 33, it was laid down that Windsurfing/Pozzoli approach need not and should not be used when it is not helpful.
31 32

[2001] RPC 7 http://www.sufficientdescription.com/2012/05/purposive-interpretation-of-promise-of.html (5th September,

2013)
33

[2012] FCA 109

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Pozzoli 34 structured approach focuses of the enquiry as to whether the differences between the state of the art and the claimed invention are obvious or not. It was held that the differences between a prior art that is lead compound in the present case and the claimed invention may be obvious, if the modifications were done as the common routine. But the claimed invention can be said non-obvious because the selection of the lead compound is itself non-obvious. On the examination of the differences between the state of the art and the claimed invention, the Pozzoli approach fails short to explain whether the selection of the lead compound constitute the inventive step. Taking into the consideration of the selection of the lead compound as given in the present case simply speaks that it is a prior art, would constitute impermissible hindsight. Accordingly, while Rennie J cited the Pozzoli approach and said it did not apply in coming to the conclusion on obviousness with respect to this case..

34

Supra Note. 2.

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9. CONCLUSION:

The court is not obliged to use this approach as the question is ultimately that set out in section- 3,35 but failure to follow it can lead to hindsight not being properly discounted. Depending upon the facts, various other approaches might assist. 36 The windsurfing/ Pozzoli test, in fact, does little more than provide discipline, reasoning and method to the statutory question as the fourth step more or less restates the statutory test. 37 The windsurfing/Pozzoli test is functionally very similar to the Problem/solution approach adopted by the EPO. The only significant distinction being that in English law all the prior art is considered however remote; whereas under the EPO approach only the single closest prior art is considered. Nevertheless, in Actavis UK Limited V. Novartis AG.38 The court of Appeal criticised certain aspects of problem/solution approach and in particular, any suggestion in adopting before English courts. First it suggested that the requirement of selecting the closest prior art is an unnecessary restraint as practitioner are forced by cost and case management select only a small number of closest prior art. 39 Secondly, the ability to reformulate the objective technical problem may lead to problems, however it is attempted. 40 Thirdly, there are the attempts to shoehorn situation into a problem and solution. Whatever ones view of these comments, it appears unlikely that the English courts will move away toward adopting the problem and solution approach any time soon. Present position of inventive step in Indian is currently litigated.

35 36 37 38 39 40

Instance v. Denny [2001] EWCA Civ 939, [2001] RPC 321 at [16] Actavis UK Limited v. Novartis Ag [2010] EWCA Civ 82 at [23] DSM NVs Patent [2001] RPC 133 at [55], CA. EWCA Civ 82(2010) Actavis UK Limited v. Novartis Ag [2010] EWCA Civ 82 at [27]-[29] Actavis UK Limited v. Novartis Ag [2010] EWCA Civ 82 at [32]-[34]

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BIBLIOGRAPHY

BOOKS AND ARTICLES


1. VK Ahuja, Law Relating To Intellectual Property Rights (1st Edition, Lexis Nexis, 2010) This book discusses and analyses the law on intellectual property rights in India. The book also discusses know-how and licences to give an overall picture of the law on intellectual property rights. A summary of all the international agreements, treaties and conventions on the subject has also been provided. 2. Miller, Burkill, Birss and Campbell, TERRELL ON THE LAW OF PATENTS (17 th edn., Sweet & Maxwell 2011) This book has discussed the UK position laid down in the Windsurfing and Pozzoli case in chapter 12. This book has given a detailed analysis on these cases. 3. Kalyan C Kankanala, Arun K. Narsani and Vinita Radhakrishnan, INDIAN PATENT LAW AND PRACTICE (1ST edn., Oxford University Press, 2010) This book discusses the patent system in India and has a comprehensive chapter on non obviousness/ inventive step in India with the most recent case decisions in Chapter 2.4 of the book. 4. R.A. Balk, "New Creations? Commentary" [January-February 1991] Hastings Centre Report 33. The researcher has referred to this article to examine the distinction between the novelty and non-obviousness criteria. Also this article gives a deep insight into the concept of non obviousness in the United States. 5. J. Bochnovic, "Invention/Inventive Step/Obviousness" In: "Patent Law of Canada G.F. Henderson et al. eds. (Carswell: Toronto, 1994) at p. 41 This article deals with the UK and European position on non obviousness and has detailed explanation on the problem solution approach. 6. Glynn S. Lunney, Jr. & Christian T. Johnson, Not So Obvious After All: Patent Laws Nonobviousness Requirement, KSR, And The Fear Of Hindsight Bias 47 Ga. L. Rev. 41 (2012)

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This article deals with the historical development of non obviousness criteria in the United States and also examines the Graham test, TSM test and KSR test on the touchstone of hindsight bias. 7. J-M. Claydon, "The Question of Obviousness in the Windsurfers Decision" [1985] 8 EIPR218. This article deals with the detailed analysis on the Windsurfing decision and makes it easier to compare the Pozzoli approach with it.

CASES
1) ACTAVIS UK LIMITED V. NOVARTIS AG The Court examined the case based on tests laid down by the EPO and in the Pozzoli case on the patent over a sustained release formulation of fluvastatin, consequently in which patent was not granted on he ground that it was obvious. Jacob LJ favoured English jurisprudence over the "two-bite" approach allowing for consideration of obviousness under the EPO problem/solution approach. In Jacob LJ's opinion, the problem/solution approach does not adequately deal with cases where the invention involves perceiving that there is a problem.

2) ASTRAZENECA CANADA INC V. MYLAN PHARMACEUTICALS ULC The court in this case held that Pozzoli approach cannot be applied in all cases. It limited the scope of Pozzoli approach in the pharmaceutical sector.

3) BISHWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL INDUSTRIES. In this case the Supreme Court had held that in order fore the improvement to be patentable it had to be more than a mere workshop improvement. Further To fulfill the criteria of inventive step the combination or improvement should either result in a new process or improved result or should be cheaper.

4) KSR V. TELEFLEX The United States Court of Appeals for the Federal Circuit re fixed the bar on patentability. That case revolved around the question of obviousness and stated that the Court must ask whether the improvement is more than the predictable use of prior
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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law
art elements according to their established functions. It stated that the question is not as to the combination of obviousness of the patent but as to the combination of obviousness of a person of ordinary skill in the art.

5) WHEATLEY V. DRILLSAFE The case related to a threaded hole cutting device, whose patent was invalidated on the ground of common general knowledge and revoked but on appeal the patent was held to be valid.

6) POZZOLI SPA V BDMO SA & ANOR The court reformulated the 4 test laid down in windsurfing case determining the criteria of non-obviousness.

7) WINDSURFING INTERNATIONAL INC V. TABOR MARINE LTD. A four step test was laid down for determining the criteria of non obviousness.

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