New Invention and Absolute Novelty

1The provisions for determining novelty or the lack of it are contained in various sections of the Patents Act. The requirement of novelty is a prerequisite condition for an invention to be granted a patent, and is provided in s 2(1)(j) of the Patents Act which requires a product or a process to be new to qualify for the grant of a patent. Section 2(1)(l) of the Patents Act defines ’new invention’ as follows:

… ’new invention’ means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, ie, the subject matter has not fallen in public domain or that it does not form part of the state of the art.

The above definition was introduced by the Patents (Amendment) Act 2005 but the expression ’new invention’ is not used anywhere in the Patents Act 1970.

2The law and the practice before the introduction of the said definition indicated that the standard of novelty followed under the Patents Act was the standard of relative novelty. (See Manual of Patent Practice and Procedure, Patent Office. See also Patents Act 1970, ss 13 and 64(1).) Section 2(1)(l) introduces the standard of absolute novelty. It defines ’new invention’ as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing the patent application with complete specification, ie, the subject matter has not fallen in public domain or that it does not form part of the state of the art. In a sense, the introduction of the above definition might seem insignificant as the term ’new invention’ does not figure anywhere in the Patents Act. Moreover, it may be argued that the term invention itself implies the idea of the thing being new and that the requirements of ’new invention’ given are the same as the requirements of any invention. But the above definition assumes significance as it introduces the absolute standard of novelty into the Patents Act.

3The Patents Act requires an invention to be new. (Patents Act 1970, s 2(1)(j).) An invention is regarded as new if it has not fallen in public domain or if it does not form part of the state of the art. The ambit of the term ’the state of the art’ would include every matter in the public domain available in any part of the world before the date of filing the patent application. As per the definition in s 2(1)(l), when an invention or technology is anticipated by publication in any document or used in any part of the world, a patent will not be granted as the information disclosed forms a part of the state of the art. It would appear that the standard of absolute novelty introduced by s 2(1)(l) may be employed in determining lack of novelty under s 64(1)(e) of the Patents Act. But s 64(1)(e) prescribes a different standard of novelty.

4The difficulty imposed by the introduction of the absolute standard of novelty is that it attempts to replace the existing relative standard of novelty contained in s 64(1)(e), albeit inconclusively. To start with, the definition of ’new invention’ is not used anywhere in the Patents Act. The standard of novelty under the Patents Act based on which a patent can be revoked for lack of novelty is prescribed in s 64(1)(e), which is a relative standard. It restricts the novelty search to ‘what was publicly known or publicly used in India’. However, the standard of novelty with regard to published documents is an absolute standard as it covers ‘what was published in India or elsewhere’.

5It is submitted that in understanding novelty, courts should try to avoid subjective judgments and should adopt the principle of ‘objective novelty’. (See Genentech’s Patent (1989) RPC 147, p 204 (CA), per Purchas LJ, where it was observed that in deciding whether an invention is new within s 1(1)(a) of the UK Patents Act 1977, one must look solely at any matter which has been ‘made available’ to the public. It is an objective question of fact and has nothing to do with the subjective qualities or knowledge of anyone.) British courts have followed the principle of ‘absolute novelty’ which requires novelty to be decided against all the information available at the priority date of the invention. This concept of worldwide novelty disregards the place where the information is available and the manner and form in which it is made available. (See Lionel Bently and Brad Sherman, Intellectual Property Law, 2000, p 414.) The standard of absolute novelty avoids subjectivity and most questions of degree. (See Milliken Denmark AS v Walk Off Mat Ltd [1996] FSR 292, p 311.)

6Section 64(1)(e) states that an invention will lack novelty if it is publicly known or publicly used in India. The ambit of the above section is limited to knowledge or use within India. However, the definition of ’new invention’ expands the scope of public use beyond India. It covers any invention or technology ‘used in the country or elsewhere in the world’. (Patents Act 1970, s 2(1)(l).) There is a need for clarification with regard to how s 64(1)(e) will be interpreted in the light of the introduction of the expression ’new invention’ in s 2(1)(l).