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Day: September 15, 2023

What is Inventive Step objection and how to overcome it?

Posted on by Tanu Singh

Patentability of a subject matter majorly depends on: Novelty, Inventive Step and Industrial applicability – and the subject matter is supposed to comply all the three criteria to be eligible for patenting. Out of the three criteria, perhaps, proving the fact that the subject matter is inventive is the most challenging one. 

Now, inventive step being a subjective matter, it is quite unpredictable at times – the way of its interpretation may vary from person to person; thus, a dearth of uncertainty is always there till the end of the tunnel, i.e. till the grant of the patent. 

So let us first understand what actually is Inventive Step:

In the Indian Patents Act, 1970, Section 2(1)(ja) defines inventive step as:

““inventive step” means 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;”

To check for the presence of inventive step in a patentable subject matter, the examiner is free to combine or even mosaic the teachings of multiple prior arts – and if the resultant of the mosaicking results in a subject matter which is closely related to the patentable subject matter in question, the inventive step of the subject matter stands objected. Which in other words, indicate that if the resultant effect of combined reading of the existing prior art results something which functions in the similar fashion or solves the similar issue or addresses the same issue as that of the present subject matter in question, then the same would not be considered to be having inventive step.

When it comes to economic significance as a part of inventive step assessment, it depends on the disclosure in the application document – which ideally is required to disclose how the present subject matter contributes to economy (for e.g.: 1/5th of the price of a similar subject matter etc.). Economic significance is usually not that difficult to prove if the application already discloses the economic significance or if not, the applicant should be able to prove the same during the prosecution stage. 

The major challenge lies in identifying ‘a person skilled in the art’ because of the fact that ‘a person skilled in the art’ is not defined in the Indian Patents Act, 1970 – thus that always leaves the discretion to the examining authority with regard to identification of Inventive Step. Based on the case law evolution, it is generally followed that a person skilled in the art is one who:

  • Belongs to the same field as that of the subject matter in question;
  • Assess the subject matter based on his expertise or acquired knowledge in the same domain and is aware of the fact that small changes can bring dramatic functionality change in the subject matter.

Further, it is the ‘hindsight bias’ of the person skilled in the art results in evaluating past actions or occurrences where the evaluator is aware of how those actions or events turned out – which influences the judgement of the inventive step of the subject matter in question.

Now, how to overcome the inventive-step objection?

For an inventor or even for an attorney, learning the fact that the patent has been rejected based on the fact of invention being ‘non-inventive’ can be quite frustrating as ‘inventiveness’ is a pure subjective matter and many-a-times becomes tough to overcome. 

In India, inventive step objection generally comes in the stages of First Examination Report or Hearing or Opposition. Being subjective in nature, it can definitely get tricky, but then there are ways in which inventive step, if justified logically, can be overcome. Those can be:

  • Technically justify the fact that the subject matter in question is not a mere workshop improvement – it involves technical advancement, and thus even the mosaicking of prior arts would not result in the technicality as involved in the present subject matter;
  • Proving the fact that the prior arts cited to challenge the inventive step fail to teach or suggest the solution to the problem as has been done by the present subject matter;
  • A mere hindsight bias of the controller – without any fall back on the prior arts can be challenged based on the fact that none of the disclosures teach or suggest the solution to the problem statement as identifies as well as solved by the current subject matter;
  • Additionally, if the inventive step justification isn’t convincing enough, claim or specification amendments can be done to take care of the same.

Moreover, a well drafted patent application can even minimize the occurrence of obviousness rejection in the first place itself. It helps in saving resources and achieving the intended results. 

With the increasing rate of patent enforcement activities in India, it is quite frequently observed that the inventive step objections come up – but then with a properly drafted application, it can be minimized to a large extent.

Author: Priyanka Chakraborty

Copyright © 2023 Intellect Vidhya Solutions Law LLP. All rights reserved.

Frequently Asked Questions:

Is obviousness the same as inventive step?

The Term Obviousness is most of the times synonymously used for Inventive step – some Patent offices use the term Inventive Step while others use non-Obviousness.

While in India, the Indian Patents Act 1970 Section 2(1)(ja) defines inventive step, US Patent Law mentions, a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

How is non-obviousness related to inventive step?

For a subject matter to be eligible for patenting, it should be sufficiently inventive and non-obvious. The purpose of the inventive step, or non-obviousness, requirement is to avoid granting patents for inventions which is a mere workshop improvement, and to achieve a balance between monopoly that patenting provides and encouraging invention.

What is the difference between inventive step and non-obviousness?  

The expression “inventive step” is predominantly used in Indian and Europe, while the expression “non-obviousness” is predominantly used in United States patent law. Thus, they both fundamentally indicates that an invention to be eligible for patenting, should be technically sound enough and not related to any known concepts of existing prior arts.

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Well-known Trademarks in India

Posted on by Tanu Singh

In today’s interconnected world, trademarks play a crucial role in differentiating products and services while also functioning as valuable business assets. Among the various types of trademarks, well-known trademarks occupy an exclusive spot. Well-known marks are the marks that have achieved exceptional recognition and reputation, transcending geographic boundaries. India, with its rich trademark jurisprudence, recognizes the significance of well-known trademarks and has put in place legal provisions to ensure their protection. In this article, we will delve into what well-known trademarks are, discuss the legal provisions, and shed light on the filing procedure.

What is a Well- Known Trademark?

A well-known trademark, also known as a “famous trademark,” is a mark that has garnered substantial public recognition and favour. These trademarks are readily distinguishable and are strongly associated with a particular brand or product. They have expanded their influence outside of their respective industries, garnering recognition in a variety of fields. Companies place a high value on their well-known trademarks and afford them extensive legal protection.

Section 2(1)(zg) of the Trademarks Act, 1999 defines “well-known trade mark”, “in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

Examples of Famous Trademarks

  • Google: As the world’s leading search engine, Google has become synonymous with internet searching. It’s simple and colourful logo is instantly recognizable.
  • Nike: The Nike swoosh is an iconic symbol in the sports and apparel industry. Nike’s “Just Do It” slogan is also widely recognized and associated with athleticism.
  • Amazon: The smiling arrow from Amazon’s logo represents customer satisfaction. Amazon’s e-commerce platform is used by millions worldwide, and its services extend beyond online shopping.
  • Ferrari: The prancing horse emblem of Ferrari is synonymous with luxury sports cars. Ferrari is known for its high-performance vehicles.

Deciding Factors for well-known trademarks

To determine the eligibility of a trademark for well-known status in India under Section 11(6) of the Trademarks Act, 1999, specific criteria must be met:

  • The trademark must have achieved a high level of recognition and goodwill among the relevant section of the public, including knowledge in India obtained through promotional efforts.
  • The trademark’s use should be substantial and consistent over time, with a wide geographical presence.
  • The trademark’s promotional efforts, such as advertising, publicity, and presentations at fairs or exhibitions, should be extensive in scope.
  • The duration and geographical area of trademark registration or application for registration under the Act reflect the use and recognition of the trademark.
  • A successful record of enforcing the rights associated with the trademark, including recognition as a well-known mark by courts or Registrars, is a crucial factor.

Filing Procedure for Well-Known Trademarks

Rule 124 of the Trademark Rules, 2017, provides the process for filing a well-known trademark in India. This process involves the following steps:

  1. Filing an application

Any interested party can submit an application online by filling out Form TM-M and attaching the required documents. These documents include a statement supporting the application, detailing the reasons for recognizing the trademark as well-known. The government fees for filing of such application is 1,00,000 Rupees per application.

  1. Evidence Submission

The applicant has to gather and submit substantial evidence of the trademark’s recognition and reputation, including market surveys, sales figures, advertisements, and media coverage.

  1. Examination Stage

The Registrar examines the application and evidence to determine if the mark qualifies as well-known, ensuring only marks with genuine recognition are granted this status.

  1. Publication 

Upon recognition, the mark is published in the Trademarks Journal for third-party opposition. If no opposition is filed within the stipulated time, typically four months, the mark is granted the status of a well-known trademark. However, it is important to note that even after the introduction of Rule 124, the courts continue to have the power to decide whether a trademark qualifies as “well-known.” 

Case Study: Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan

  • Background

In the landmark case of Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan, a critical issue unfolded. An undergarment retailer boldly adopted the term ‘Benz’ in its brand name and introduced a logo eerily resembling the emblem famously associated with the automotive giant, Mercedes-Benz. This emblem, the iconic three-star ring, is celebrated globally for its automotive legacy. Intriguingly, the defendant ventured into the undergarment domain while employing a logo featuring a human figure enclosed within a three-pointed ring. Mercedes-Benz took legal action against the defendant.

  • Verdict

The court called the defendant’s actions a trademark infringement. The Mercedes-Benz three-star ring is highly regarded in the automotive industry. The court ruled and stopped the defendant from using the three-star ring and the term “Benz” with undergarments. The judgement was well-known worldwide, showing the strong global reputation of the Mercedes-Benz trademark. It was acknowledged that it is widely known that “Benz” is strongly associated with the automotive industry. The verdict confirmed that using a well-known mark in a different industry is both infringement and an attempt to benefit from its worldwide recognition.

This case stands as a testament to the imperative of safeguarding well-known trademarks on a worldwide scale. It underscores the necessity for robust legal measures to preserve the integrity of well-known marks, preventing unauthorized use that could dilute their reputation and create confusion among consumers worldwide.

Significance of Well-Known Marks 

Well-known trademarks have assumed a heightened significance in India’s dynamic business landscape. As the Indian economy continues to grow, both domestic and international brands are vying for consumer attention. In such a competitive environment, well-known marks are invaluable. They not only assure consumers of the quality and authenticity of products and services but also foster brand loyalty.

Additionally, well-known marks have a substantial impact on trademark litigation. The recognition of a mark as “well-known” can significantly strengthen a trademark owner’s position in legal disputes, making it more challenging for infringers to argue that they were unaware of the mark’s reputation.

Conclusion

In India, as in the rest of the world, well-known trademarks hold immense value for both businesses and consumers. They symbolise reliability, quality, and an enduring tradition of excellence. The legal framework of India acknowledges the significance of safeguarding these trademarks, ensuring that they continue to flourish and retain their individuality. The well-considered legal provisions, filing procedure, and trademark rules of 2017 aid in preserving the integrity and reputation of well-known trademarks, thereby fostering innovation and the expansion of national brands.

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