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NATIONAL LAW SCHOOL OF INDIA UNIVERSITY
BANGALORE
A RESEARCH PROJECT ON
CRITIQUE OF POZZOLI CASE (INVENTIVE STEP TEST) ANDCOMPARISION WITH INDIAN LAW
(UNDER THE SUPERVISION OF Prof. T. RAMAKRISHNA)
A PROJECT FOR- INTERNATIONAL AND COMPARITIVE OF
INTELLECTUAL PROPERTY RIGHT
SUBMITTED TO: SUBMITTED BY:
Prof. Dr. T. RAMAKRISHNA Abhishek Bhargava
Faculty for Intellectual Property Rights I.D. No. 553
NLSIU, Bangalore LL.M. [Business Laws]
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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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TABLE OF CASES
1 ACTAVIS UK LIMITED V. NOVARTIS AG
2 ASTRAZENECA CANADA INC V. MYLAN PHARMACEUTICALS ULC
3 BISHWANATH PRASAD RADHEY SHYAM V. HINDUSTAN METAL
INDUSTRIES.
4 BELOIT TECHNOLOGIES INC V. VALMET PAPER MACHINERY INC
5 HABERMAN V. JACKEL INTERNATIONAL
6 KSR V. TELEFLEX,
7 ROCHE V. CIPLA.
8 PANDUIT CORPN V. BAND-IT- CO LTD
9 POZZOLI SPA V BDMO SA & ANOR
10 WHEATLEY V. DRILLSAFE
11 WINDSURFING INTERNATIONAL INC V. TABOR MARINE LTD.
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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
FOOTNOTING
8-9
3. POZZOLI SPA V BDMO SA & ANOR:
BAKCGROUND
10
4. APPROACH FOLLOWED IN POZZOLI CASE
STRUCTURED APPROACH FOLLOWED:
10-11
5. DEFINITION: THE PERSON SKILLED IN THE ART
COMMON GENERAL KNOWLEDGE
HINDSIGHT
11-13
6. INVENTIVE STEP CONCEPT IN INDIA 13-14
7. IMPACT OF INVENTIVE STEP TEST IN POZZOLICASE AND COMPARISON WITH DIFFERENT LAWS
US EPO
14-15
8. COMPARISON WITH INDIAN LAW 16
9. ADVANTAGES/DISADVANTAGES OF THE
STRUCTURED APPROACH IN POZZOLI CASE
17
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10. CONCLUSION AND SUGGESTIONS 18
11. BIBLIOGRAPHY 19-21
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1. INTRODUCTION TO NON-OBVIOUSNESS:
Section 2(i)(j) of the Indian Patent Act, 1970 1 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 underthe 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
1 Hereinafter referred to as the Act.
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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.
2 Graham v. John Deere Co., 383 U.S. 1 (1966)
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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 case 3 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?
3 Pozzoli SpA v. BDMO SA (2007) F.S.R 37
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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 case 4 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 ofUK 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
Supra Note. 3.5 Id.6 Id.
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2. POZZOLI SPA v BDMO SA & Anr 7
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 didn t 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
somethin g 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 th rough the skilled person s eye.
7 Supra Note. 3.8 Id
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3. APPROACH FOLLOWED IN POZZOL I 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 firstthree steps are essentially for the purpose of putting the court in the right frame of mind (they
9 [1985] R.P.C 59 at 71 and 73-7410 [2007] F.S.R 37 at paras 14-231111 Instance v. Denny [2002] R.P.C 14 at para. 17 ; Smithkline Beecham Plc v Apotex Europe Ltd [2005] F.S.R
23 at paras 34-3512 [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 question-
which 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 Synthon 15, 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 Virgin v. Premium Aircraft interior [2010] R.P.C 8 at para.115; Actavis v. Novartis [2010] FSR 18 at para.5514 Degussa-Huls SA v. The Comptroller-General of Patents [2005] R.P.C 24 at para.24.15 SYNTHON v SMITHKLINE BEECHAM [2005] UKHL59
16 Valensi v. British Radio Corportation [1972]17 Gillette Safety Razor Co v. Anglo-American Trading Co Ltd [1913]18
British Thomsom v. Stonebridge (1916) 33 R.P.C 166 at 171.19 Automatic Coil v. Taylor Electrical (1944) 61 R.P.C 41 at 43.
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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. Fi rst, the inventionshould 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 Panduit Corpn v. Band-It- Co Ltd [2003] FSR 12721
Beloit Technologies Inc v. Valmet Paper Machinery Inc [1997] RPC 70522 Kavanagh Balloons v Cameron Balloons [2004] R.P.C 5 at para.33.
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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 ANDCOMPARISON WITH DIFFERENT LAWS
US Approach:
Interestingly; Pozzoli case has come very near to a highly significant US Supreme Court
Case, KSR v Teleflex 28, 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 Deere 29 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 person s 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
28 550 U.S. 398 (2007)29 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 Jackel 30 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 personskilled 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 Pozzoli s 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 [2001] RPC 732 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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BIBLIOGRAPHY
BOOKS AND ARTI CLES
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. Thebook also discusses know-how and licences to give an overall picture of the law onintellectual property rights. A summary of all the international agreements, treatiesand 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 Pozzolicase in chapter 12. This book has given a detailed analysis on these cases.
3. Kalyan C Kankanala, Arun K. Narsani and Vinita Radhakrishnan, INDIAN PATENTLAW AND PRACTICE (1 ST edn., Oxford University Press, 2010)
This book discusses the patent system in India and has a comprehensive chapter onnon obviousness/ inventive step in India with the most recent case decisions inChapter 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 thenovelty and non-obviousness criteria. Also this article gives a deep insight into theconcept 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 hasdetailed 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 theUnited States and also examines the Graham test, TSM test and KSR test on thetouchstone of hindsight bias.
7. J-M. Claydon, "The Question of Obviousness in the Windsurfers Decision" [1985]8 EIPR 218.
This article deals with the detailed analysis on the Windsurfing decision and makes iteasier to compare the Pozzoli approach with it.
CASES
1) ACTAVI S UK L I MI TED 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 I NC V. MYLAN PHARM ACEUTICAL S UL C
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) BI SH WANATH PRASAD RADHEY SH YAM V. H I NDUSTAN M ETAL
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. TELE FL EX
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 thatthe Court must ask whether the improvement is more than the predictable use of prior
8/13/2019 Abhishek Bhargava (ID-553) IPR Project
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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law
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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) WHEATL EY V. DRIL LSAF E
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 BDM O SA & ANOR
The court reformulated the 4 test laid down in windsurfing case determining the
criteria of non-obviousness.
7) WINDSURFI NG I NTERNATIONAL I NC V. TABOR MARINE L TD.
A four step test was laid down for determining the criteria of non obviousness.
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