The Ms. P. Sita Saga

24 October 2013
  • Dr. Mohan Dewan & Advocate Tushar Shrikhande


Inventive step is defined in Section 2(1)(ja) of the Indian Patents Act, 1970 (the Act) 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 term ‘person skilled in the art,’ a vital ingredient of this section, has surfaced time and again in many judgments and has attracted extensive debate amongst legal practitioners and scholars alike, as to who the person skilled in the art actually should be. The Intellectual Property Appellate Board (IPAB) in a couple of recent judgments has pursued this issue in detail and has yielded definitive precedents.

In July this year, the IPAB rejected patent no. 201538 assigned to Aloys Wobben (AW) on the basis of a revocation petition filed by Enercon (India) Ltd (EIL). The patent related to a wind turbine with an electrical generator and its method of operation. During the scrutiny of the inventive step, the issue of the identity of the ‘person skilled in the art’ was debated.

AW cited the Bishwanath Prasad Radhey Shyam V Hindustan Metal Industries judgment and proposed that"Was it for practical purposes obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the date of the patent to be found in the literature then available to him, that he would or should make the invention the subject of the claim concerned?" Furthermore, AW asserted that the person skilled in the art should only be in India. The IPAB, however, contended that there is no territorial limitation to the person skilled in the art, so long as the person is competent with regards to the skill and knowledge of the state of the art in India. Also, the Act does not anywhere state that the person skilled in the art should be an Indian. Therefore, in the absence of such a limitation, it is obvious that the law framers did not wish to put any such restriction on the profile of the person skilled in the art.

To justify this, the IPAB cited some sections of the Act such as Sec. 25 (1)(d), Sec. 25(2)(d), Sec. 64(1)(e), Sec.64 (1)(h), Sec.64 (1)(l), Sec. 64 (1)(q) and Sec. 64 (2)(b) of the Act, wherein territorial limitation has been intentionally incorporated. The IPAB further clarified that although the afore-stated sections did contain the term ‘in India’, it was used in contexts that included enablement, prior knowledge and use; but not with reference to obviousness.

The IPAB also made reference to the Roche V Cipla Delhi High Court judgment which establishes that it is not necessary for a person skilled in the art to be in India/an Indian. Therefore, the submission of the AW that a pre-requisite of the person skilled in the art is to be only in or from India, was ruled out by the Board.

The Hoffman-La Roche Ltd. & Anr. V Cipla Ltd. case also established that the person skilled in the art is presumed to know not only the state of the art at that time, but also to possess better than average knowledge thereof. Further, the person should have knowledge that was publicly available along with common sense. The judgment, therefore, made it clear that a person should be sufficiently skilled or knowledgeable of the art (Ms. P. Sita) and should not merely be a Person Having Ordinary Skills IThe Art (Mr. Phosita). Hence, the IPAB in this judgment adopted Section 2 (1)(ja) as, ‘a feature which must be technically advanced as compared to existing knowledge and that technical advance and is such that it make the invention not obvious to Ms. P Sita’.

In another decision in August, the IPAB revoked Allergen Inc.’s patent no. 212695 on the basis of an application for revocation filed by Ajanta Pharma Ltd. Ophthalmic pharmaceutical compositions for the treatment of ocular hypertension were the subject matter of the patent. While determining obviousness, the IPAB, in accordance with its afore-stated stand on the person skilled in the art, took into account the prior art published literature that formed a part of the common general knowledge of Ms. P. Sita and not Mr. Phosita.

In India it is established now, that the person skilled in the art is the one that has more than average knowledge of the art, i.e. it is Ms. P. Sita and not Mr. Phosita, and she also applies common sense. While determining obviousness and inventive step under Section 64(f) of the Act, a certain Ms. P. Sita should have regard to what was publicly known or used or published in India or elsewhere before the priority date. On the other hand, the same Ms. P. Sita, while establishing obviousness and inventive step under Section 25(e) of the Act, should have looked at what was used or published in any document in India or elsewhere, before the priority date. Such a case that discusses the position of the person skilled in the art with regards to opposition proceedings is yet to surface at the IPAB. Here, it is significant to note that Ms. P. Sita is required to look at what was ‘known’ at the priority date in a revocation proceeding, whereas she has to look at what was ‘used’ at the priority date in an opposition proceeding. Moreover, with regards to the published prior art, in a revocation proceeding, Ms. P. Sita must to take into account ‘any’ published literature whereas she, in an opposition proceeding, is required to consider published literature only in the form of a ‘document’.


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