What are Combination Inventions?

Occasionally, an innovator may be made an effort to combine two or more existing apparatus to form the novel apparatus, and then they may be attempted to look for patent protection for the same. The main barrier that they might require to conquer the non-obviousness requisite for patent protection. An invention makes by combination usually looks obvious because the standard of novelty required to combine two inventions might be very minimum.

In this article, we will discuss, what are the basic requirements are needed to grant for combination patents and legal provision which are changed over the period of time in various jurisdictions.

Patent the combination of two existing technologies as a new invention:

A combination that qualities a patent is a combination whose constituents work in an unpredicted manner to supply an exceptional outcome. Although they function in harmony, they remain unique from how they function independently.

Simply, a combination of two existing patent/.s only does not surety that granted as a patent. The reason behind this is, if the combination innovation functions in a manner that the two existing patents persist to bring out their relevant characters, then innovation will not contain the novelty/originality and requirement of non-obviousness. Hence, it’s not qualified as a patent. Though, the invention would only be granted a patent if it satisfies specific criteria.

Achieving a “combination patent” was comparatively easy earlier. Although, getting a combination patent more difficult in today’s time as the examination has become more rigid.

Legal Provisions in various jurisdictions:

US position:

There are three types patents are granted in the United States Patent and Trademark Office (USPTO) are Utility patents, design patents, and Plant patents. The invention can involve multiple patent types sometimes. The complex situation may arise when other individuals attempt to utilize, prepare, or benefit from the invention.

Position before 2007:

When innovation combines element from more than one things which are patented. Before a milestone judgment in 2007 for getting a combination patents were comparatively slack. An application of patent simply had to represent that they had produced somewhat that was non-obvious to a person which is skilled in that respective art. “Obvious” was described as being discovered to teaching, Suggestion, or motivation (TSM) to merge the numerous constituents into the novel invention.

Position after 2007:

After the milestone judgment of KSR V. Teleflex in 2007, which outcome in extra strict regulations in the USPTO for the combination patents. This case rotated on an invention in manufacturing of auto in which the court ruled that combining constituents considered for the particular intention was an “obvious innovation “ and hence it’s not eligible to grant a patent.

The judgment delivered by the Honorable Supreme Court becomes revolutionary in the arena of Combination patents. The description for the term “Obvious” more stringently defined and it’s getting difficult to get a grant for Combination Patents in the coming years. The latest standard is that innovation should comprise wholly new improvements within that particular arena.

India’s Position:

A meticulous recipe or dosage type of a functional constituent either single-handedly or with important suitable elements and brings for the intentional usage is typically described in terms of the composition/ combination claims. These types of claims are essential in pharmaceuticals, chemical, and biotech fields where the invention typically connected to making a formulation using an amalgamation of many constituents. Patents for products connected to foodstuff and medicines were non-patentable subject matter before 2005, only the method or process of their formulation was eligible. Although, criteria for non-patentable included by the Ayyangar Committee report, 1959 under clause 3(d) of the Patents Act, 1970. The said clause states that simple admixture by aggregation of the recognized properties will not be eligible for the patent. In 1970, when Patent law came into force, then this committee’s report was acknowledged and said clause inserted at Section 3(e) of the Patents Act. Usually, claim aimed at combinations, compositions, and devices are examined under this provision.

Therefore the Section 3(e) considered as an obstacle for the ever-greening of customized constituents also expressly prevents the patentability of the pharma sector’s which does not results in any synergetic effect that is higher than the outcome of individual components. It’s essential to note that, simply aggregation of features should be kept separate from a combination invention which importantly needs that the properties or collection of properties must have the functional reciprocity for representing a combined effect further than the addition of their single component’s activity. These properties should be functionally connected to each other is the actual characteristic of a combination invention.

Related case laws:

KSR V. Teleflex:

As we discussed earlier, this case delivered milestone judgment and change the definition of non-obviousness. We will see a more elaborative discussion on this point.

In this case, the Supreme Court of the U.S. refers to the issue of combination inventions in the year 2007. The Supreme Court deals with the issue of “whether the combination of the suitable gas pedal with a sensor on the pedal was obvious?”Gas Pedals that can be amended in respect of height and Driver’s sitting position were already largely known and in use. Hence the defendant contended that the combination patent of the plaintiff that comprised of a suitable gas pedal and a sensor on the pedal was not valid cause the combination was obvious. The Supreme Court ruled that a common engineer in the automobile industry would identify the usage of combining these parts and would discover their combination obvious.

Ram Pratap V. Bhaba Atomic Reaserch Centre

In this case, established jurisprudence on a combination of inventions is discussed to a large extent. Court held that a simple juxtaposition of properties already acknowledged before the priority date which have been illogically selected from many numbers of numerous combinations that could be selected was not a patentable subject matter of that invention.

Lallubhai Chakubhai Jarivala V. ShamaldasSankalchand Shah

In this case, the court recognized that,” A novel combination may be the subject-matter of a patent however each part of the combination per se is not new, for here the novel art is not the part themselves, but the assembling and functioning them combine, which ex theory is novel. If the outcome generated by such a grouping is either novel object, or enhanced object, or a cheaper object then before, such combination is an innovation or products within the law and considered well as the subject-matter of the patent.” Court further added that, “where a minor modification results that which was substantially not useful into beneficial and essential, yet the outcome being the difference between failure and success, it is fit as subject matter for a patent.”

Concluding Remarks:

To conclude for the U.S. jurisdiction, the 2007 judgment in Teleflex, common engineering that engineers execute during their normal daily activities might no longer become patentable. The Supreme Court has elevated the issue about the “standard of combination patent “, but it lingers according to the case only. The common query stays whether an invention is adequately new and non-obvious to consider for a patent, or is simply a combination of two granted patented innovations.

Whereas in the Indian jurisdiction, a synergism test is depending on the hypothesis that it is usually apparent to take existing components and combine them. So, the ‘synergism test’ is useful totally on the recital of the element after the combination is done disregarding the non-obviousness or obviousness of preparing the combination. Indian courts, basically, depending on the test that takes place in the case of “Biswanath Prasad Radhey Shyam V. Hindustan Metal Industries “which comprising the arrangement and rearrangement of components/elements.

BY-

Sushama Dilip Mhasurle