IP Intelligence › Patent Criticalities › New is the easy part. Inventive is the hard part.
Patent criticality
New is the easy part. Inventive is the hard part.
Nobody has ever made this. Why is the examiner still objecting?
Novelty is a single-document test and it is largely mechanical. Inventive step is a judgement about whether a competent, unimaginative person in your field would have got there anyway - and the Indian definition also requires a technical advance or economic significance.
Why the Indian test is unusual
Section 2(1)(ja) defines inventive step as a feature that involves technical advance compared to existing knowledge, or economic significance, or both, and that makes the invention non-obvious to a person skilled in the art.
That is two requirements joined together, not one. It is not enough to show that nobody had done it. You have to be able to say what technical problem the difference solves, or what economic significance it has, and then that the step was not obvious.
How the objection is really answered
Listing differences does not work. The examiner already knows what is different - that is why the objection is obviousness rather than anticipation.
What works is a chain: here is the technical problem; here is what the cited art teaches a skilled person to do about it; here is why that teaching leads away from what we did; here is the effect our difference produces; here is the evidence for that effect. Data helps enormously. Assertion does not.
Guard against hindsight in the objection itself. Once you know the answer, combining two documents always looks obvious. The question is whether the skilled person, without your specification in front of them, had any reason to combine those particular documents.
Section 2(1)(ja) of the Patents Act 1970.
Indian authority going back to the Supreme Court has asked whether the alleged discovery lies so much out of the track of what was known before as not to suggest itself naturally to a person thinking on the subject, and has treated a mere workshop improvement as falling short.
Combination objections citing two or three documents are the most common substantive objection in Indian examination.
Build the inventive step argument into the specification when you draft it: state the problem, state the effect, and put the comparative data in.
Arguing that the invention was difficult for you personally. The test is the notional skilled person.
Objections citing a document from a completely unrelated field. Ask why the skilled person would ever have looked there.
Write one sentence: compared with the closest prior art, our difference is X, and the technical effect of X is Y. If you cannot fill in Y, that is the work to do.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
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Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.