UNDERSTANDING PATENTABILITY AND INVENTIVE STEP IN PAKISTAN: A COMPREHENSIVE OVERVIEW

ABSTRACT

The concept of “inventive step,” or “non-obviousness,” is a central criterion in determining patentability. This concept is essential to ensure that patents are granted only for innovations that represent a significant advancement over existing knowledge. The Pakistani patent system, guided by the Patent Ordinance 2000, shares similarities with international standards such as the European Patent Convention (EPC). Both frameworks require an invention to be novel and involve an inventive step, which is not immediately obvious to a person skilled in the art. This Article explores the difficulties and criteria associated with evaluating inventiveness in patent law, focusing on Pakistani case law, comparative international practices, and the challenges faced by courts in applying these criteria.

INTRODUCTION

Patents play a crucial role in fostering innovation by providing inventors exclusive rights to their creations. For an invention to be patentable, it must meet specific criteria, including novelty and an inventive step. In Pakistan, these requirements are codified in the Patent Ordinance of 2000.

This overview delves into the concept of the inventive step, the process of patent evaluation, and the legal framework governing patentability in Pakistan, alongside a review of the relevant literature and case law.

THE CONCEPT OF INVENTIVE STEP

An invention is considered patentable if it is both novel and involves an inventive step. Section 9 of the Patent Ordinance, 2000, defines an inventive step as a feature of the invention that is not obvious to a person skilled in the art, given the state of the art. Despite this definition, the term “inventive step” is often challenging to interpret, leading to difficulties in evaluating whether an invention meets this criterion. Courts frequently grapple with this concept due to its abstract nature and the broad scope of what constitutes the state of the art.

Invention is to find out or discover something not found or discovered by anyone before and it is not necessary that the invention should be anything complicated the essential thing is that the inventor was the first one to adopt it and the principle therefore is that every simple invention that is claimed, so long as it is something novel or new, would be an invention and the claims and the specifications have to be read in that light and a new invention may consist of a new combination of all integers so as to produce a new or important result or may consist of altogether new integers and the claim for application by the defendant has to be either by prior user or by prior publication.

In the modern technological landscape, where innovations are rapidly evolving, identifying the uniqueness and inventive steps of new inventions is increasingly complex. When patent infringement cases are brought before the courts, several primary questions guide their evaluation:

• Is the invention novel?
• Does it involve an inventive step?
• Is it capable of industrial application?
• What laws and case laws apply to the determination of these aspects?
• What will be the court’s decision?

THE ROLE OF COURTS IN EVALUATING INVENTIVENESS

The task of determining inventiveness is central to patent law and is often fraught with uncertainty. While novelty is a fundamental requirement, it is not sufficient on its own. An invention must also demonstrate an inventive step, which means it should not be obvious to someone skilled in the relevant field. This requirement ensures that patents are granted only for inventions that present a significant advancement over existing knowledge.

The concept of inventiveness is not always clear-cut and can vary depending on the perspective of the evaluator. As a result, evaluating inventiveness is one of the most challenging and contentious aspects of patent law, leading to prolonged and complex patent disputes. The difficulty in defining and assessing inventiveness underscores the importance of a structured approach to analyzing patent applications.

PATENTABILITY CRITERIA IN PAKISTAN

In Pakistan, the patentability of an invention is governed by the Patent Ordinance, 2000. The ordinance outlines several key criteria for patentability:

1. NOVELITY: The invention must be new and not previously disclosed in any form. The state of the art includes all public knowledge available before the patent application date.
2. INVENTIVE STEP: The invention must involve a step that is not obvious to a person skilled in the This requirement ensures that patents are granted only for innovations that represent a significant advancement over existing technologies. The old case of Harwood v. Great Northern Ry where a patent was regarded as lacking novelty when the court could only find an insubstantial difference, is a good example of this. As the law developed further a separate phrase was introduced by the courts for the situations described. Where there was too small a difference to support a patent, it was said to be lacking in subject matter.
3. INDUSTRIAL APPLICATION: The invention must be capable of being used in industry or have a practical application.
4. EXCLUSIONS FROM PATENTABILITY: Certain inventions are not patentable under Pakistani These include:
   • Discoveries, scientific theories, and mathematical methods.
   • Literary, dramatic, musical, or artistic works.
   • Schemes, rules, or methods for performing mental acts or playing games.
   • Computer software and presentation of information
   • Inventions that are contrary to public order or morality, such as those harmful to health or the environment.

LITERATURE REVIEW AND CASE LAW

The Patent Ordinance 2000 serves the primary objective of promoting scientific and technological development by granting exclusive rights to inventors. This legal framework encourages innovation by providing protection and competitive advantage for a specified period. The ordinance aims to balance the interests of inventors and the public by eventually making patented inventions available for public use.

The legal definitions within the ordinance play a crucial role in shaping the patenting process. The term “invention” is broadly defined as a novel and useful product or process. This definition underscores that patents are granted not for abstract ideas but for specific, tangible implementations of those ideas.

The term “patent” refers to the exclusive rights granted to an inventor to manufacture, use, or sell their invention for a limited time. This exclusivity does not extend to the underlying ideas or principles but focuses on the specific application of those ideas.

For an invention to be patentable, it must be more than a mere combination of known elements. It must produce a new and significant result that demonstrates a clear inventive step. This means that the invention must introduce a novel aspect or improvement that is not immediately apparent to someone skilled in the field.

The utility requirement mandates that the invention should be practically beneficial and applicable. A new invention that cannot be used in any practical way is not considered patentable.

The concept of inventiveness is integral to patent law and requires that the invention must not be obvious to a person skilled in the art. This means that the invention should represent a significant advancement over the existing knowledge and not merely a trivial modification.

Certain categories of inventions are excluded from patentability. These include discoveries, scientific theories, and aesthetic creations, which are not considered patentable because they do not meet the criteria of novelty and utility in the context of technological advancements.

Different types of patent applications, such as ordinary, convention, and patents of addition, cater to various needs and circumstances. Ordinary patent applications cover new inventions, convention applications claim priority based on earlier filings in other countries, and patents of addition address improvements to existing patents.

The Patent Office, part of the Intellectual Property Organization since 2005, oversees the administration and granting of patents under the Patent Ordinance 2000. This office ensures compliance with the legal standards and processes involved in patent applications and grants.

ADVANTAGES

• Encourages Innovation: The inventive step criterion helps ensure that patents are granted for truly novel and significant advancements, fostering innovation.
• Protection for Inventors: By granting exclusive rights, inventors are incentivized to develop and disclose new technologies.
• Alignment with International Standards: Pakistan’s patent system aligns with international norms, facilitating global trade and collaboration.

DISADVANTAGES

• Complex Evaluation: Determining whether an invention meets the inventive step requirement can be complex and subjective.
• Potential for Disputes: The standard’s interpretation can lead to disputes and inconsistent applications across different cases.
• Inhibits Incremental Improvements: The focus on non-obvious advancements may sometimes overlook incremental improvements that could be valuable.

PAKISTANI LAW INTERSECTING INTERNATIONAL IP LAW

Pakistan’s Patent Ordinance 2000 aligns with international IP law standards, particularly those of the European Patent Convention (EPC). This alignment facilitates international collaboration and trade by ensuring that

Pakistani patent law meets globally recognized standards. However, there are differences in interpretation and application that can lead to varying outcomes in patentability assessments.

FUTURE RECOMMENDATIONS FOR PAKISTAN

• Enhance Training for Patent Examiners: Increasing training for patent examiners can improve consistency in evaluating inventive steps.
• Strengthen IP Awareness: Raising awareness about intellectual property rights among inventors and businesses can lead to more informed patent applications.
• Improve Legal Framework: Periodic reviews and updates to the patent law can address emerging technological advancements and align with international best practices.
• Promote Transparency: Ensuring transparency in patent application and examination processes can reduce disputes and enhance public trust in the patent system.

CONCLUSION

Evaluating the inventive step in patent law is essential for distinguishing genuine innovations from trivial advancements. The Pakistani Patent Ordinance 2000 aligns well with international standards, but challenges persist in interpreting and applying these standards across diverse technological fields. The interplay between novelty, inventive step, and industrial applicability forms the backbone of the patent system, ensuring that patents incentivize substantial and non-obvious advancements.

REFERENCES

• Patents Ordinance 2000 (Pakistan) https://aari.punjab.gov.pk/system/files/Patents%20Ordinance%202000.doc_.pdf accessed [30-8-2024]
• AIR 1978 DELHI 1
• Patents Ordinance 2000 (Pakistan) https://aari.punjab.gov.pk/system/files/Patents%20Ordinance%202000.doc_.pdf accessed [30-8-2024]
• [1864] 11 L.C 654, at 682-683.
• Straus, J. (2005). European Patent Law: Towards a Uniform Interpretation. The Hague: Kluwer Law International.