What do KSR and Novartis' Indian Glivec troubles have in common?

Great post and very valid points.

A few doubts:

“In other words, mere innovations are not capable of patent protection.”

Why do you say that “innovations” are not capable of patent protection? Or, what is you’re definition of an “innovation”.

2. “Except in Australia, which has Innovation Patents designed specifically to have an extremely low threshold of 'inventiveness' - much easier to meet than obviousness”

Are you saying that “inventiveness” is a lower standard than “non obviousness” (TRIPS uses them interchangeably).

 Also, do you mean that Australia has a utility model kind of system.

3. how does it matter whether the statute drafts them as patentable subject matter issues or as an obviousness question (apart from the fact that there will be an issue of “timing”--at what point in time will the controller examine the application to see whether it complies with a section 3(d) type section?

Hi Shamnad

Thanks very much for the great questions. Here are some brief responses.

Let me know what you think - and please join in everyone - we can all explore this together.

1 - I was (perhaps inelegantly) observing that India's 3(d) puts a lower threshold on what would be considered patentable which basically relies on the law of inventive step. Many people use the term 'innovation' to describe something that is new but not quite up to that standard. To reinforce the point that this is not an India-only issue, I referred to the US Supreme Court decision in KSR v Teleflex.

Does that help?

2 - Inventiveness and Obviousness. I agree that in many contexts they can be used interchangeably. Note, however, to be pedantic, one should probably use 'inventive step' and 'obviousness', not interchangeably, but as the opposite descriptions of this ground of invalidity. In some countries, 'inventiveness' is used to describe the quality of 'being an invention' - which is basically broadly the same as patentability.

Yes - Australia has a Utility model system - the 8 year right is called an 'Innovation Patent'. There is no obviousness test for the Australian Innovation Patent - instead, the test is one of 'innovative step'. To pass the test and maintain validity, one must simply show that the difference between the claimed innovation and the prior art makes a substantial contribution to the working of the thing (be it a product or process). There's some obvious strategic implications of this for Australian patentees which I will pick up in a future article back at duncanbucknell.com

3 - Words, the labels we give things and the way they are used are incredibly important. If we start using them in other contexts, we can have some unintended results. We usually don't find these out until much later.

I also believe that harmonisation of IP law across the globe is a very good thing for the commercial users of the system - saving time and money if nothing else. Consequently, while countries are free to make these amendments, they should ideally be placed in the correct context in the relevant legislation.

I look forward to the continuing discussion.