Section 2(1) (j) of the Patents Act, 1970 defines the ‘invention’ as a new product or a process involving an inventive step and capable of industrial application. The Act defined the terms ‘inventive step’ and ‘capable of industrial application’ under Section 2(1) (j) (a) and Section 2(1) (c) respectively. However what is ‘new’ was not defined and left to be interpreted using the provisions of Section 13.
Interestingly, we also have Section 2(1) (l) which defines “new invention” but the term has not been used anywhere in the Act. The term sounds redundant in light of definition of term “invention”. We cannot resist arguing that when an invention is itself new, what sense does the term “new invention” makes. Every invention, in order to obtain a grant, has to fit in the definition of invention under Section (2) (1) (j). Moreover, a patent is granted under the Act for an invention and not for a “new invention” as per Section 2(1) (m). Although Section 13 clearly marks out as to when an invention would be anticipated, it was desired that a proper definition clause be inserted in order to define what is ‘new’.
It is apparent from the legislative history of the 2005 amendment to the Patents Act, 1970 that such proposal was forwarded so that frivolous claims are not filed and the patent office is not unduly burdened. It was accepted that inventors are technical persons and in all likelihood they would not read provisions of Section 13 so as to determine the novelty of their invention. The legislature thought that it was prudent to incorporate the definition of ‘new’ so that the inventors are well aware of the eligibility of their claims. However, it can be inferred from the attached document that the Legislature approved the addition of clause “new” invention and what finally came into existence was “new invention”.
It is crystal clear that the term “new invention” is a product of legislative drafting error. There is no cogent reason for defining “new invention” when the term “invention” is already defined. However, it is surprising that this error is still not rectified by the Government nor this section would ever be interpreted by the courts since the same is redundant. This is precisely the reason that the term is not used anywhere else in the scheme of the Act. The Amendment Bill of 2005 had more such ambiguous definitions such as definition of the term “pharmaceutical substance” which defines pharmaceutical substance as ‘any new entity involving one or more inventive steps’. According to this definition every invention under Section 2(1) (j) would fall under the said definition. It must be noted that the Amendment Bill was passed without much deliberation and without referring to Standing Committee or any other Technical Committee.