abhishek bhargava (id-553) ipr project

8/13/2019 Abhishek Bhargava (ID-553) IPR Project

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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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Critique of Pozzoli case (Inventive Step Test) and Comparison with Indian Law

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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.
http://www.piperpat.com/LinkClick.aspx?link=articles/news/pitchfork/synthon.pdfhttp://www.piperpat.com/LinkClick.aspx?link=articles/news/pitchfork/synthon.pdf


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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
http://www.sufficientdescription.com/2012/05/purposive-interpretation-of-promise-of.htmlhttp://www.sufficientdescription.com/2012/05/purposive-interpretation-of-promise-of.html


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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)
http://www.lexisnexis.in/law-relating-to-intellectual-property-rights.htmhttp://www.lexisnexis.in/law-relating-to-intellectual-property-rights.htm


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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


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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.

abhishek bhargava (id-553) ipr project

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