William James once said: “Genius means little more than the faculty of perceiving in an unhabitual way.” His observation seems particularly apposite in the context of determining inventive step in patent examinations. This plays a critical role in deciding the fate of a patent application. The various tests for assessing obviousness take into account the nature of the invention, the current state of the art and whether the invention would be obvious to a person skilled in the art. Section 2(1)(ja) of the Patents Act sets out the criteria for patentability and defines 'inventive step' as “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".

The major factors to consider when examining a patent application thus relate to the following: 

• defining the person skilled in the art;
• assessing inventive step; and
• evaluating the prospective commercial viability of the invention.

These factors are largely influenced by the regimes in parallel foreign jurisdictions. However, the Patent Office interprets the terms 'technical advancement' and 'economic significance' subjectively. These terms are presumably dealt with simultaneously by Section 2(1)(ac) of the act, which defines “capable of industrial application”, alongside Section 3, which sets out an exhaustive list of inventions which are not patentable in India.

Assessing inventive step

Where an invention meets the novelty requirement, which is absolute, the next challenge for the examiner is to assess whether the approaches followed in its creation are non-obvious and identify the inventive measures taken to arrive at a solution to a technical problem. Measures which have been considered in assessing inventive step include the following: