This piece has been authored by Ishan Aryan and Gunjan Choudhary ,3rd Year B.A.LL.B Students at National Law University Odisha

Keywords: – Prior Art, Field of Endeavour, IPR, Patent Law, Indian Patents Act.

This blog explores the ambiguity, examines its implications, and suggests remedies for establishing a more dependable and coherent framework for determining the field of endeavour for comparison with prior art.

Determining what is patentable

A patent provides exclusive rights, enabling inventors to safeguard their creations from being utilized, manufactured, sold, or brought into a country by others for a specific duration. Nevertheless, these exclusive rights are not absolute, and the patent system incorporates provisions allowing challenges to a patent’s validity or enforceability under specific conditions. In India, challenging a patent involves a legal process regulated by the Indian Patents Act, 1970, and can be initiated through mechanisms like pre-grant opposition, post-grant opposition, revocation petitions, and infringement suits.

Various grounds exist for contesting a granted patent to ensure that only deserving and genuinely innovative inventions receive patent protection. These grounds include lack of novelty, which is applicable when a prior invention already exists. Some grounds relate to the invention itself, like whether it’s truly new and inventive (obviousness), explained clearly (insufficient disclosure), or legal to patent (non-patentable subject matter). Others grounds focus on the application process, including possible misinformation (misrepresentation), ethical issues (contravention of public order or morality), and even mistakes made during the examination (flawed examination processes). In order to avoid any conflicts, three major criteria need to be fulfilled to determine whether a product can be patented or not.

The basic requirements for being patented are: –

1. Novel application.

2. Non-obviousness

3. Industrial application

Novelty, a mandated criterion, requires that an invention must be new. Assessing novelty involves comparing the invention with the “prior art,” encompassing the knowledge and technology already accessible to the public. Common sources of prior art include issued patents and printed publications. A document cited against the invention that an applicant aims to patent is termed a prior art reference.

Non-obviousness or inventive step refers to a characteristic of an invention that presents either a technical advancement compared to current knowledge, economic significance, or both. This characteristic renders the invention non-obvious to someone with expertise in the field.

Industrial application signifies that the invention can be produced or utilized within an industrial context.

The concept of prior art

Prior art constitutes any evidence indicating that an invention is already documented or known. It does not require physical existence or commercial availability. It is sufficient if someone, at some point, in some place, has described, demonstrated, or produced something very similar to the technology utilized in the invention.

‘Prior art’ generally refers to the total knowledge accessible to the public before the patent application’s filing date or, if priority is claimed, before the application’s priority date. While the definition appears straightforward, different patent offices worldwide use varying methods to determine its scope during patent claim assessments.

The European Patent Convention (EPC) defines ‘state of the art’ (‘prior art’) as encompassing information made public through written or oral descriptions, usage, or any other means before the filing of the European patent application. This definition imposes no limitations based on geographic location, language, manner of information dissemination, or the age of the document/source.

While the Indian Patent Act doesn’t explicitly define ‘state of the art,’ the 2005 amendment clarified what constitutes a “new invention”. It states that any invention not previously disclosed anywhere before the patent application date qualifies as new.

The comparison with “prior art” comes into play for the first two above-mentioned conditions only i.e., novelty and non-obviousness. Should an invention be detailed in prior art, a patent for that invention becomes invalid. A patent must demonstrate novelty and an inventive step compared to the prior art. Consequently, if a publication predates the patent filing and thoroughly describes the invention as claimed, the invention loses its novelty, rendering the patent invalid.

Uncertainty regarding field of endeavour

To be considered inventive, a claim needs to be more than just new. It must also show a technical advancement compared to the closest prior art, something not readily apparent to person skilled in the art. (“Avery Dennison Corporation v. Controller of Patents and Designs”) If multiple prior art documents are considered together, there should be a discernible link connecting the claim to these documents, obvious to someone skilled in the field. It must be demonstrated that when confronted with the claim, the skilled individual would refer to another citation to complement it. Otherwise, combining the reading of various prior art documents or creating a mosaic from them is not permissible. The major problem that exists with respect to the comparison with prior art is defining the ‘field of endeavour’ to which both the invention and the person skilled in the art should belong.

The notion of “field of endeavour” holds a pivotal role in Indian patent law, serving as a key measure for determining an invention’s non-obviousness. Despite its criticality, the boundaries defining this field remain frustratingly unclear. This ambiguity leads to inconsistent interpretations, potential misuse, and ultimately disrupts the smooth operation of the patent system.

The Indian Patents Act itself lacks an explicit definition of “field of endeavour.” This absence of clarity permits diverse interpretations, largely influenced by judicial pronouncements. While cases like “Cipla Ltd. v. F.Hoffmann-La Roche Ltd. & Anr” and ”Novartis AG v. Union of India” have offered some guidance, they often rely on vague terms such as “closely related” or “same technical field,” leaving room for subjectivity and inconsistency.

This ambiguity yields various adverse effects. Firstly, it creates uncertainty for inventors and patent applicants who struggle to anticipate how the “field of endeavour” will be construed in their specific cases. This uncertainty can impede innovation and discourage investment in research and development. Secondly, it leads to inconsistent judgments across different courts and tribunals, undermining the fairness and predictability of the patent system. Lastly, it opens avenues for potential misuse, enabling parties to potentially manipulate the concept to invalidate patents in fields beyond their direct expertise.

The way out

To address this complexity and establish a more robust framework, several solutions can be considered:

Developing clearer guidelines: The Indian Patent Office (IPO) could issue guidelines outlining specific factors to consider when defining the “field of endeavor,” including scientific principles, addressed technological problems, and utilized components in the invention.

Embracing a multi-factor test: Courts and tribunals could adopt a multifaceted approach by considering multiple factors like skill level in the art, necessary adaptation, and existence of obstacles, instead of relying on a single subjective factor.

Drawing from international best practices: Learning from established jurisdictions like the United States and the European Patent Office, India could adapt their more detailed frameworks for defining the “field of endeavour” to gain clarity.

Promoting transparency and consistency: The IPO and courts can enhance transparency by providing clear reasoning behind their decisions regarding the “field of endeavour” in specific cases, thus fostering a consistent body of jurisprudence.

Conclusion

In summary, the ambiguity surrounding the “field of endeavour” in Indian patent law poses a substantial obstacle to innovation and the effective operation of the patent system. By adopting a more nuanced and transparent approach, integrating best practices from other jurisdictions, and formulating clearer guidelines, India can progress toward establishing a more reliable framework for defining this crucial concept. This, in turn, will nurture a more predictable and conducive environment for innovation and technological progress in the country.