The Curious Case of New Invention

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.

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Legal Updates

We bring you the updates for last week. Hope it updates you with all the news from legal world.

Updates: 26th October to 1st November 2014.

The National Commission for Women will be a placing a proposal before a panel constituted by the Supreme Court on November 8 for legalizing prostitution in India..  The apex court had constituted the panel after a public interest litigation was filed in 2010 on rehabilitation of sex workers. The panel will deliberate on the existing provision of Immoral Traffic (Prevention) Act, 1956 (ITPA). The deliberations would focus on improved conditions that would allow sex workers to lead a dignified life. But activists have voiced their concerns over the NCW’s proposal. The legalization of prostitution goes against the ILO’s definition of ‘decent work’.

A man was arrested by cops for allegedly having sex with another man, which was recorded by his wife on a hidden camera. The man has been arrested under Section 377 of the Indian Penal Code that makes it an offense to commit 'carnal intercourse against the order of nature.' The highly debated re-instatement of the clause by the Supreme Court which was previously struck down by the Delhi HC as unconstitutional makes gay sex an offence punishable with life imprisonment.

The Supreme Court has rejected the plea by Nithari killer Surinder Koli seeking recall of the judgment upholding his death sentence in Rimpa Haldar murder case.

While applying for a passport for her child, an unwed mother will have to declare how she conceived. This was the Union Government’s reply to a query by a division bench of the Bombay HC that was hearing a petition by a woman challenging the passport authority's refusal to include her step-father's name in her passport. According to the advocate appearing on behalf of the foreign ministry, a unwed mother should file an affidavit stating ‘how she has conceived’ and ‘if she was raped’ and why she does not want the father's name included.

The CIC has held that the husband had a right to know about the amount of salary of the wife but information pertaining to expenditures and loan deductions cannot be given under the RTI Act. Amount of salary and the details of pay scale of a public servant can be a part of voluntarily disclosable information under Section 4(1)(b) but deductions, personal loans, seeking salary slips and residential address are not disclosable unless a public interest is involved.

The Delhi University will soon have its own IP policy. The IP policy will look into the patentability of the research undertaken by the students and staffs, the registration of copyright and trademark by the DU.  As per the university statistics, 168 patents are registered by Delhi University, 71 patents are under prosecution, 35 patents have been granted and 52 patent applications have lapsed.

The Ministry of Health and Family Welfare, Government of India recently issued a notification introducing a requirement that the pictorial and textual statutory warnings must cover 85% of the display area of the package. The notification, that amends the Cigarettes and Other Tobacco Products (Packaging and Labelling Rules), 2008 specifies that the pictorial warning must cover at least 60% of the area and the textual warning 25% percent of the area of the package—on both sides of the package. This move by the Government seems to be a plain packaging requirement though it is not in the purest form as in other countries like Australia and some European countries.

The US Eleventh Circuit Court has come out with a landmark ruling on the legality of course packs involving Cambridge University Press, Oxford University Press and Sage Publications against Georgia State University. GSU was indulging in digital dissemination of  course packs allowing students to obtain a digital copy of the designated course material. The Court held that the thought the excerpts were not transformative they were for a non-profitable educative purpose and it constituted fair use, despite the non-transformative nature.

We hope that this summarizes the last week's News. Your comments and suggestions are welcomed.

Until next post of weekly News updates.

Anjana Srinivasan, (2nd Year student of IIT Kharagpur Law School)

For 'OFF Court.'

Disclaimer: This blog or any post thereof is not to be considered to be in any way associated with the official stand of IIT kharagpur or RGSOIPL on the issues being discussed in the said post. The opinions on the blog are the authors own and should not be considered as legal advice.

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