In his current work printed within the Journal of Mental Property Regulation and Follow, Dr. Mo Abolkheir argues that the prevailing interpretation of ‘ingenious steps’ locations emphasis on the inventor’s imaginative capability somewhat than the invention itself. Bhuwan Sarine discusses and analyzes this attitude, providing his ideas on Dr. Abolkheir’s method. Bhuwan is a 3rd yr B.A., LL.B. (Hons.) pupil at Nationwide Regulation College of India College, Bengaluru. He’s fascinated by Mental Property Legal guidelines and the dynamic intersection of regulation and expertise, and seeks to pursue a profession in academia and analysis. His earlier posts can be found right here.
Logical Fallacy in Patent Regulation: Analysing Abolkheir’s Problem to the Soundness of Non-obviousness Take a look at
By Bhuwan Sarine
In a just lately printed editorial within the Journal of Mental Property Regulation and Follow, Bristol-based thinker Dr. Mo Abolkheir made a giant declare about there being an (unnoticed) logical fallacy on the core of patent regulation. Questioning the logical foundations of patent legal guidelines, he argues that defining ‘ingenious step’ when it comes to ‘non-obviousness’ shifts the main target of inquiry to the inventor, somewhat than the invention itself. This occurs when the invention is assessed for non-obviousness with respect to the usual of ‘individual expert within the artwork.’ Abolkheir has a problem with this as a result of what finally ends up being examined isn’t the invention, however the inventor’s imaginative and cognitive expertise. He even goes thus far to name this inventio advert hominem fallacy, a variant of the well-known advert hominem fallacy (for the uninitiated, advert hominem is a logical fallacy through which somebody’s argument is sought to be rebutted utilizing private assaults on his/her character, as a substitute of addressing the argument itself).
On this put up, I’ll mirror upon the declare made by Dr. Abolkheir. After laying the bottom, I’ll assess the energy of his declare by addressing factors for and towards it. I’ll lastly conclude with the questions this declare offers rise to.
The Argument
Throughout jurisdictions, ‘ingenious step’ is assessed on the idea of the ingenious idea’s non-obviousness, i.e., whether or not or not the core ingenious idea is apparent to an individual expert within the artwork. This, as Dr. Abolkheir argues, offers rise to a logical fallacy for the reason that focus is on the imaginative capability of the inventor, somewhat than the invention itself. It confuses ‘invention’ with ‘individual.’ His argument proceeds thus: for being patentable, (i) the core ingenious idea have to be past the grasp of these with common imaginative powers (individual expert within the artwork), (ii) the inventor has grasped the core idea of invention, and due to this fact (iii) the inventor’s powers of creativeness are above common.
Illustration of the ‘non-obviousness’ check utilizing India’s case:
Beneath s. 2(1)(ja) of the Patents Act, 1970, ‘ingenious step’ is outlined when it comes to three important elements, i.e., technical advance, and/ or financial significance, and non-obviousness. Judicial dicta has laid down the check for non-obviousness. In Hoffman-La Roche Ltd. v. Cipla Ltd., the Delhi HC held that if the invention is apparent to a talented employee, within the discipline involved, within the state of information regarding on the date of patent to be discovered within the literature obtainable to him, patent can’t be granted. It must be seen if the variations between the claimed invention and the prior artwork are such that the claimed invention would have been apparent.
Now, who is that this ‘expert employee’ or ‘individual expert within the artwork?’ Not too long ago, in Rhodia Operations v. Assistant Controller of Patents and Designs, the Madras HC elaborated on this expression. It held that it is a hypothetical individual created by regulation, and possesses a talent stage which is bigger/good than a median individual. As a result of most disciplines/arts require a variety of expertise or talent set, this individual must possess the talent set to do the job effectively. Excellent imaginative talent, nevertheless, isn’t required.
Coming again to Abolkheir’s declare
To sum up from India’s instance, the query to be requested is whether or not, on utilizing the literature (prior artwork), the individual expert within the artwork is ready to arrive on the claimed invention. If the reply is sure, the edge of ‘ingenious step’ isn’t met.
In his piece, Abolkheir factors to this very comparability between the imaginative capacities of the inventor and the individual expert within the artwork. He says that an invention is patentable provided that the previous’s imaginative powers are above common, i.e., past that of an individual expert within the artwork. In his phrases, this evaluation (specializing in the inventor as a substitute of the invention) falls prey to the inventio advert hominem fallacy. He calls it a variation of the well-known advert hominem fallacy.
What’s the Consequence of this Fallacy?
Abolkheir means that patent legal guidelines have been not directly testing the inventor’s powers of creativeness not directly for all these years. In accordance with him, patent legal guidelines usually are not twin examination methods to evaluate each invention and inventor, however are designed for the previous solely. They find yourself inspecting the latter unintentionally. This has given rise to a system of second-hand examination, which based on him is just like assessing the dad and mom of a pupil by inspecting his/her homework. One other, and maybe larger, consequence is that this sort of evaluation has led to an elevated quantity of subjectivity within the system. This causes differing assessments of patentability by controllers and judges at completely different ranges. Consequently, whereas getting patents turns into more and more tough, granted patents additionally develop into weak to post-grant invalidation and revocation.
Strengths of the Piece
Abolkheir is right in saying that evaluation goes past the target evaluation of the invention alone whereas assessing non-obviousness. He due to this fact suggests limiting it to check the invention and the related prior artwork. That is additionally as a result of not like colleges and universities, patent workplaces have restricted experience to have the ability to go into cognitive assessments of this type.
One other energy of his piece is that it highlights the difficulty with this sort of evaluation with the rising use of AI. Presently, there’s lots of indeterminacy across the non-obviousness evaluation. In his article, Gregory Mandel notes the components producing indeterminacy. One in every of them is the failure to outline the baseline stage of atypical talent towards which an invention could be assessed. With the rising use and big potential of AI to mix info from fully completely different sources, the edge of ‘individual expert within the artwork’ will inevitably enhance sooner or later. Patent candidates are due to this fact going to seek out it very tough to guage and fulfill this indeterminate threshold. The current non-obviousness check was conceived in a very completely different period. If the identical is sustained to evaluate functions within the current (and future), it should double the burden for the candidates. Abolkheir’s piece does effectively to focus on the desirability of a reform.
Evaluating Abolkheir’s Declare: Is there a Logical Fallacy?
A serious criticism of Abolkheir’s piece is that when checked out carefully, the declare of this evaluation being just like advert hominem fallacy is far-fetched. Beneath advert hominem, the response (of a private nature) is irrelevant to the argument made/query requested. However below non-obviousness check, the evaluation remains to be restricted and related. There isn’t a broad examination of the individual’s total cognitive skills. What’s examined is his/her imaginative expertise with respect to the actual invention.
One of many factors that Abolkheir appears to have missed is that various actors are concerned in the whole patenting course of. It isn’t restricted to the invention in isolation. Protecting actors apart, the evaluation additionally has to have a look at novelty, utility, public curiosity and pre-grant opposition, amongst different elements. Due to the character of inquiry being such, completely different individuals will function at completely different phases, and it won’t be practicable to look at the invention solely for these elements. Whereas advocating a restricted mode of evaluation for non-obviousness, he overlooks the truth that the whole course of in any other case is inherently multifaceted.
One other argument towards this piece is that the inventor and his invention usually are not so distinct and separable as Abolkheir makes it appear to be. The latter is an expression of the previous’s skills, and each usually are not strictly two entities. His instance “inspecting the dad and mom of a pupil by inspecting his/her homework” seems to be a misfit to the case at hand as a result of a pupil and his dad and mom are two distinct entities.
Abolkheir highlights and criticises the subjectivity launched into the system by this sort of evaluation and even hints that an goal mechanism is lacking. Nevertheless, he fails to level out why objectivity is fascinating and the way it might remedy the issue of differing assessments by controllers and judges, within the backdrop of rising use of AI.
Points to Ponder Over
With the rise in AI utilization, the edge of ‘individual expert within the artwork’ goes to extend. This piece has underscored the need of a special form of evaluation, protecting in thoughts the modified circumstances. The query arises, what are the alternate options obtainable? How would an goal mechanism be arrived at and the way the identical would deal with the problem posed by AI? A associated situation to suppose over is the chance and feasibility of adopting completely different methods of evaluation for AI and non-AI associated patents.
Amongst alternate options, Abolkheir talks in regards to the half-causation framework which he devised in 2019. Nevertheless, it’s extremely technical in nature and would require specialised coaching. Along with a rigorous examination of the invention in query, it entails dividing the whole technique of figuring out the invention into phases. However such strict compartmentalisation won’t be possible for all innovations. If we lengthen the experience argument right here, it might not be practicable to anticipate the patent workplaces or Courts to use half-causation. Whereas it addresses the logical flaw highlighted, it’s hit by lack of information.
Conclusion
Though there are some lacking items in his argument, Dr. Abolkheir has stirred a dialogue on the potential of reform in patent regulation. In the direction of the tip, he hinted at developing with a comply with up paper presenting his alternate options to the logical fallacy together with the half-causation framework. It will be fascinating to see what he comes up with, since he claimed it to supply extra objectivity in addition to management the AI threat. The general query nonetheless looms, are the foundations of the non-obviousness check as strong as has been assumed until date? Additional analysis is required to reply this.
[Thanks to Swaraj for asking me to look at the paper, and the discussion session attended by Swaraj, Praharsh, Sunidhi Das, Samridhi Chugh and Yukta Chordia for the comments and questions which helped frame and write this post.]