Summary of "Lecture 09: Roadmap for Patent Creation - Non Obviousness by Prof. Gouri Gargate"

Summary — main ideas and lessons

Non-obviousness (inventive step) is a core patentability criterion distinct from novelty. While novelty asks whether an invention is new relative to the prior art, non-obviousness asks whether the invention would have been obvious to a person having ordinary skill in the art (PHOSITA). The test is evaluated from the PHOSITA perspective to allow for unforeseeable technological developments and to separate genuine inventive genius from mere workshop or routine improvements.

Oxford Dictionary (simplified): “not obvious; not immediately apparent.” In patent law this becomes a technical/legal test against the skilled person standard.

Statutory / technical definition (elements of “inventive step”)

The presented definition contains four elements: 1. A technical advance over existing knowledge (state of the art). 2. Economic significance. 3. Both technical advance and economic significance (possible combination). 4. The invention must not be obvious to a person skilled in the art.

Why non-obviousness matters

It distinguishes real inventions from trivial changes (rearrangements, substitutions, obvious combinations).
Assessments of non-obviousness are often complex and may rely on multiple documents, expert evidence, and case law (unlike novelty, which can sometimes be defeated by a single prior document).

Typical scenarios and how they fare

Common scenarios that typically fail the non-obviousness test

Mere rearrangement of known parts with no new technical or economic effect.
Simple combinations of known items (e.g., cap + muffler; umbrella + knife) when there is no synergistic or new effect.
Mere material substitution (iron → wood) without a new technical result.
Combining known technologies into one device that only offers convenience (no added technical effect or economic advantage).
Predictable results or mere verification of earlier predictions.
Simple change in sequence/assembly (A+B+C → A+C+B) if no new effect results.

Situations that may pass non-obviousness

A mixture or combination producing a new, unexpected, or synergistic effect (1 + 1 → effect > 2).
Reconfiguration that yields a genuine technical improvement or economic benefit beyond mere convenience or cosmetic change.

Checklist / methodology for assessing non-obviousness

Practical steps an examiner or applicant can use:

Identify the closest prior art (state of the art).
Define the technical contribution claimed and the problem solved.
Ask whether the claimed solution provides a technical advantage or economic significance over prior art.
Consider whether the claimed difference is:
- A new technical effect or synergy, or
- Merely a mechanical combination, rearrangement, substitution of materials, or predictable optimization.
Evaluate the perspective of PHOSITA:
- Would PHOSITA, using routine skill and common general knowledge, arrive at the claimed invention?
- Would PHOSITA combine multiple prior disclosures in an obvious way to reach the claim?
Examine prior art documents (multiple documents may be combined to show obviousness).
Consider expert testimony where industry practice or common techniques are relevant (e.g., established extraction temperatures in chemical processes).
Check whether claimed improvements are merely verification of predicted results or involve genuine inventive ingenuity.
If combining known components, assess whether the combination produces an unexpected/synergistic result or economic advantage. If not, it is likely obvious.
For patent applicants: gather evidence of unexpected effects, comparative data, or expert declarations to rebut an obviousness rejection.

Examples discussed and lecture conclusions

Architect reusing iron pipes as a bench: likely obvious (mere rearrangement) unless a technical/functional improvement or unexpected effect is shown.
Cap combined with a muffler (to protect from cold): likely obvious if simply combined without synergistic effect.
Knife built into an umbrella: likely obvious as a mere combination unless it produces an unexpected technical result or solves a non-trivial problem.
Replacing an iron door handle with a wooden one: likely not patentable (material substitution alone is routine).
Combining three existing instruments into one device for convenience: likely obvious unless the combination produces new technical advantages or economic benefits.
Chemical example (Indian opposition case): a claimed method for neem oil extraction (solvent Soxhlet extraction, 40–60°C, producing oil free of bitter constituents) was held obvious based on prior literature and expert opinion that such temperatures and solvents are routine in oil extraction; the patent was not granted after opposition.
Mixtures/compositions: patentable only if the combination produces new or synergistic effects; mere aggregation with predictable results is obvious.

Legal and procedural points

Case law (Supreme Court example cited — A Vishwajeet Prasad Rhodesia v. Hindustan Metal Industries) stresses the importance of assessing non-obviousness and differentiating true inventions from mere workshop improvements.
Novelty often relies on a single prior document; for obviousness, examiners may consider multiple documents and combine teachings.
Indian Patent Act context: two types of oppositions:
- Pre-grant opposition: filed after publication but before grant.
- Post-grant opposition: filed after grant (within one year).
Expert evidence can be decisive in opposition/examination (e.g., long-practiced industry norms can show that a claimed step was routine).

Takeaway / practical advice

To strengthen patentability on inventive step, demonstrate and document an unexpected technical effect, synergistic result, or clear economic advantage over prior art.
Avoid claiming mere substitutions, routine combinations, or rearrangements without evidence of improved function or new technical contribution.
Prepare supporting experimental data and expert statements when the inventive step may be challenged.

Speakers / sources featured

Prof. Gouri Gargate (lecturer)
Oxford Dictionary (definition of “non-obvious”)
Supreme Court case cited: “A Vishwajeet Prasad Rhodesia versus Hindustan Metal Industries” (referenced in lecture subtitles)
Indian Patent Act / Indian patent opposition procedure (pre-grant and post-grant opposition)
Expert witness in oil extraction (unnamed, described as 30 years’ experience)
Opponent (unnamed party in the patent opposition example)
Several hypothetical inventors/illustrative examples (architect; inventors combining cap + muffler, umbrella + knife; material substitution)