Thursday 16 August 2012

Invention and Innovation: How Different Are They ?

-Swapna Sundar, IP Dome

(Excerpt from ‘IP Smart – how to get ahead using IP’ a book in progress by Swapna Sundar. © Swapna Sundar, 2012)

An ‘innovation’ is a new process or device that contributes a significant differentiation to a pre-existing functionality of a known invention. This significant differentiation can be provided by one or more of several ‘innovations’ including design, ease of use, ease of manufacture and addition of known features of functionalities. Some ‘innovations’ like the iPod are better known than the individual ‘inventions’ that make them possible.

Technology is what enables ‘innovation’; while it is ‘commercial science’ that leads to ‘invention’. Technology innovation is the process through which improved technologies are developed and brought into widespread use. The process of innovation includes research, development, design and market use. These processes are enabled by arrangements between financiers, market research agencies, designers, scientists and laboratories of different disciplines and organisations that produce and market the product.

While ‘invention’ lies at the core of the technological advancement, it is risky to invest in it as returns are unpredictable. With a radical invention, it is not possible to say whether it would succeed in the market. However, with an innovation comprising known and tested inventions, the possibility of success is much higher. This is the reason that most investments are targeted towards innovative technologies with clear commercial applications and financial returns.

Under the Indian Patents Act, 1970, an ‘invention’ means any new and useful -
•    art, process, method or manner of manufacture;
•    machine, apparatus or other article;
•    substance produced by manufacture,    
                        and includes any new and useful improvement of any of them.

In Bishwanath Prasad RadheyShyam Appellant v Hindustan Metal Industries , one of the landmark cases in Indian IP law, the Supreme Court of India laid down the importance of assessing ‘inventive step’, as follows:

"It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent."
In non-law terms, an invention is a new device, method, composition or process. The process could be an improvement on the existing process. However, this improvement must result in a new product or functionality. Inventions should not be obvious to others working in the field – either in academia or in industry, or both. The term ‘innovation’ does not appear in the Act, and no protection is provided to innovations.
To understand ‘innovation’ as compared to ‘invention’ let us look at a species of patents that are not protected in India.

Several countries in the world have the practice of granting ‘Petty Patent’ protection to minor inventions that are useful and industrially applicable such as those relating to tools and implements, but do not represent a technical step forward in the art and fail to cross the barrier of ‘inventive’ step. These petty patents are also called ‘utility models’. It was the German Patent law, which in 1978, first introduced limited protection for simple devices for 3 years. Soon Japan followed suit, closely followed by China, Korea and Taiwan, though with significant differences from German law in one or more of the following respects:

• Standard of invention required.
• The basis on which novelty is assessed.
• Whether examination is required.
• Costs.
• Duration of protection.

The fifteen years up to 2000 saw the introduction of utility model protection in at least 25 jurisdictions which did not have them previously, taking the total number of countries with petty patent protection to 77. These patents are called Utility Model in China; Innovation Patent in Australia; Utility Model in Japan, Italy; Germany (Gebrauchsmuster); France (Certificate d’Utilitie) and Spain; Short Term Patent in Holland and Ireland and Short Patent in Belgium. In some countries like Australia, a utility model can be converted into a standard patent. As of now, India, USA and UK do not grant protection for petty patents.

Utility patents provide cost advantage. Normally petty patents are not examined before grant. As it is only an examination that would reveal whether the patent is valid, they may be more difficult to sell or license, or enforce, until the patent has been examined and certified.

The Australian Patent Office grants ‘Innovation Patents’ to inventions that are new, useful and involve an innovative step.

In 2008, the Australian Federal Court has handed down a decision relating to the enforceability of innovation patents, wherein, a substantive judicial decision was made regarding the definition of ‘innovative step’. In Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd  JusticeGyles considered three innovation patents for roadside posts for supporting signage or delineating paths, roadways or boundaries. The three innovation patents were granted on applications divided from a standard patent application. In a finding that turned largely upon construction of the relevant claims His Honour held that Dura-Post’s ‘Exy-Drive Steel Flex’ post infringed the patents. Dura-Post had claimed that the patents did not relate to a manner of manufacture, or lacked fair basis, novelty, utility or clarity, and also included the ground of lack of innovative step.

When considering whether an innovative step subsisted, His Honour prescribed the following steps:

•           Compare the invention as claimed in each claim with the prior art base and determine the difference(s),

•           Look at the difference(s) through the eyes of a person skilled in the relevant art in the light of the common general knowledge as it existed in Australia before the priority date, and

•           Ask whether the invention as claimed only varies from the kinds of information set out in prior art in ways that make no substantial contribution to the working of the invention.

In other worlds, in the context of the claimed roadside post, this meant the question was whether the claimed features made a substantial contribution to the way the roadside post functions. The question was not whether the claimed features contributed to the claimed function of the roadside post of being elastically bendable.

Further, the proper construction of the term ‘substantial’ in this context will depend on the situation - it may mean ‘great’ or ‘weighty’ in some situations, or ‘more than insubstantial’ or ‘of substance’ in others. While not judicially stating that an ‘innovative step’ requirement for an innovation patent constitutes a lower level of inventiveness as compared with an ‘inventive step’ for a standard patent, the court did provide a clear distinction between the term ‘inventive step’ as applied to standard patents and ‘innovative step’ as applied to innovation patents.

An innovation patent can protect an invention that has a point of differentiation that provides a substantial contribution to the working of the invention, even if that point of differentiation is obvious.

A related concept is ‘technology’. In its very general sense, technology is the application of scientific knowledge for practical purposes through the usage and knowledge of tools, techniques, crafts, systems or methods of organization, especially in industry. Change in the real world is the explicit purpose of technology, and not, as is the case with science, the understanding of nature; accordingly its solutions are not right or wrong, verifiable or falsifiable, but more or less effective from different points of view.

However, given the widespread use of the term in the 20th century, it has evolved to mean several different classes of ‘technology’ such as advances in Information ‘Technology’. Technology has also come to mean the branch of knowledge dealing with engineering or applied sciences. In anthropology, technology also refers to the body of tools and other implements produced by a given society, therefore, technology is also the way human beings use machines and other tools to make or do something. Technology includes all the objects from a basic pencil and paper to the latest electronic gadget.

Thus technology also refers to goods or services, or goods and services that result in a technical method to achieve a practical purpose or in improvements to productivity. The know-how behind such technology is also technology. Design, development and realisation of a solution - whether that be through prototype, batch- or mass- production or some form of three-dimensional or computer model – is technology.

Design and production involve co-operating multi-disciplinary teams of designer, production engineer and materials scientist, but also may require “technologists” in performing a multitude of functions, such as working with others, operating within budgets, persuading decision makers, communicating to clients and working to deadlines.

In today’s world, technology has also evolved to reflect the values that we hold dear such as ‘green or sustainable’ technology, and ‘people-centric technology’ depending on the rightness or wrongness of a particular solution in ethical terms apart from suitability for purpose and ease of manufacture.

In July 2011, several newspapers  carried news that the Department of Industrial Policy and Promotion had made 
a proposal to the Government for protecting petty patents. Nothing more has been heard on this proposal till date. As matters stand, Indian Patents Act does not recognise innovations as protectable subject matter.

However, Innovation has its supporters among policy-makers, entrepreneurs, innovators and academic & research institutions in this country, including bodies such as the National Innovation Council. The advocates of innovation in India support the growth of ‘innovation for India’ which is to be appropriate for the Indian population.

The Indian capacity to innovate in adversity is also being seen globally as an idea that can be emulated in small and large companies, organisations and developing economies. Indian-born telecom millionaire and Chairman of the National Innovation Council, Sam Pitroda says, in his foreword to ‘Jugaad Innovation’ , ‘ (India’s) unique needs call for a new model of innovation that focuses on affordability and inclusive growth and lifts people at the bottom of the pyramid out of poverty and deprivation.’ And again, ‘…our innovation needs to be frugal with scare resources, affordable for our poorest citizens, and environmentally sustainable.’ According to Mr.Pitroda, innovations abound in our country, the challenge is to scale and standardize, and market these innovations.

 Introduction to PPH 

The Patent Prosecution Highway (PPH) is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between some patent offices. It also permits each participating patent office to benefit from the work previously done by the other patent office, with the goal of reducing examination workload and improving patent quality.

Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently.

PPH speeds up the examination process and lowers costs. Managers responsible for their organization’s intellectual property strategy and legal counsel looking to obtain the best, most cost-effective advantage for their clients should consider it as a means to deliver significant benefits to their businesses.
Benefits to the PPH include:

Accelerated Examination
Examination within two to three months from the grant of the PPH request provided the application has completed all its pre-exam processing and is ready for examination.

Greater Efficiency
More than 90 percent of PPH cases are allowed. The allowance rate for non-PPH cases is less than 50 percent.

Decreased Costs of Prosecution
On average, PPH cases have fewer actions per disposal when compared

A Patent Cooperation Treaty/Patent Prosecution Highway (PCT/PPH) pilot program was started on 29 January 2010 for a planned period of two years. This pilot program enables to "[fast-track] patent examination procedures for PCT applications that have received a positive written opinion of either the International Searching Authority or the International Preliminary Examining Authority, or an international preliminary examination report from the European Patent Office (EPO), the Japan Patent Office (JPO) or the United States Patent and Trademark Office (USPTO).