Simple Inventions are not necessarily superficial workshop modifications

                                                          Authors |  Anand Barnabas & Dipanjana Chakraborty

Nobel Prize laureate Sir William Golding believed that, “the greatest ideas are the simplest.” A recently issued decision by the Delhi High Court (“the Hon’ble Court”) echoes this notion.

In the matter of Avery Dennison Corporation v. Controller of Patents and Designs (IN Application No. 5160/DELNP/2013, titled 'Notched Fastener') the Hon’ble Court set aside an impugned order dated 12 August 2021 and directed that the patent shall proceed for grant. In its judgment, the Hon’ble Court has provided a helpful benchmark for assessing non-obviousness/inventive step. ‘Inventive step’ assessment has often been equivocal, with courts worldwide suggesting a plethora of approaches and tests to decide this issue objectively. The Hon’ble Court’s decision has provided a valuable addition for assessing non-obviousness of so called ‘simple’ inventions.

Submissions of the Counsels

The learned Counsel for the appellant described the technical advancement of the claimed invention over the closest prior art and pointed out that a comparison between the figures of the closest prior art and the subject patent would itself demonstrate that the subject patent is not obvious when considering the knowledge of the closest prior art. The counsel contended that the subject patent is worthy of patent protection as it involves an inventive step.

The learned Counsel for the respondent submitted that the claimed invention was ‘superficial’ and a mere workshop improvement over the closest prior art. The counsel further submitted that the impugned application is an attempt aimed at evergreening since the closest prior art was also assigned to the appellant.

Opinion of the Bench

After surveying the different tests laid out over the years by various courts and authorities in different jurisdictions, the Hon’ble Court held the following fundamental principles while analysing inventive step:

i.                    Simplicity does not defeat an invention - even simple inventions are patentable.

ii.                  If a long time has passed since the prior art was published and a simple change resulted in unpredictable advantages, the Court would tilt in favour of holding that the invention is not obvious.

The Hon’ble Court alluded to Vickers v. Siddell (1890) 7 R.P.C. 292 and Pope Appliance Corp. v. Spanish River Pulp & Paper Mills Ltd, (1929) 46 R.P.C. 23 to clarify that simplicity in the invention should not deter the Court from granting a patent.

Further, alluding to Terrell on the Law of Patents and Brugger v. Medic-Aid Ltd, [1996] R.P.C. 635, the Hon’ble Court concluded that one of the sure tests in analysing the existence of inventive step would also be the time gap between the prior art document and the invention under consideration.

The Hon’ble Court observed that the claimed invention has been filed almost 18 years after the closest prior art, and no other prior art has been cited between the period 1992 (year of publication of the closest prior art) till 2010 (priority year of the impugned application) which has dealt with fasteners in the manner set forth in the claimed invention, or has even come close to suggesting changes in the prior art fastener stock. Moreover, since the Complete Specification clearly explains the disadvantages of the prior art and sets out in clear terms the various advantages of the subject invention, the Hon’ble Court observed that the said advantages are logically decipherable while one understands the invention.

The Hon’ble Court further held that if the invention was so obvious, fasteners and fastener stock being products used in bulk in industries, any third party could have made the changes in the prior art to arrive at the subject invention – which obviously has not happened.

From a comparison between the closest prior art and the subject matter of the impugned application the Hon’ble Court concluded that the claimed features are clearly different and that the subject invention is not obvious to a person skilled in the art. Further, the Hon’ble Court held that any variation or modification in the closest prior art is not tenable.

The Hon’ble Court observed that patents have been granted in other major jurisdictions including USA, Japan, South Korea and China. It was further observed that the issue of evergreening would not arise in these facts.

Conclusion:

Although inventive step has to be decided on a case-to-case basis, the Hon’ble Court’s observations should encourage innovators to invent simple yet impactful improvements to existing products and seek protection for the same. Patent practitioners would do well to advise inventors seeking protection for simple improvements to include a clearly decipherable technical advantage of their invention over the closest prior art in the complete specification.

Copy of judgment:

http://164.100.69.66/jupload/dhc/PMS/judgement/05-11-2022/PMS04112022CAP292021_164233.pdf