PATENT SPECIFICATION.docx

PATENT SPECIFICATION An invention is patentable provided it meets three fundamentals of patentability, which are novelty, inventive step and industrial applicability. In order to inquire about monopoly, applicants need to reveal technical information pertinent to these three prerequisites in a patent specification. The patent application is then filed with Patent Office for necessary examination. The effect of the grant of a patent is bases on something we call “this for that” (quid pro quo). “This” is the knowledge disclosed to public and “that” is the monopoly granted for a term of patent. After twenty years of monopoly, the information provided in patent specification is opened to the public to make use of it. The term “sufficiency of disclosure” refers to adequacy of pertinent information to be provided in the specification to enable an average skilled person to perform the invention. It is stated in Halsbury‟s Law that insufficiency of description has two brushwood, (1) complete specification must describe an embodiment of the invention claimed in each of the claims and that the description must be sufficient to enable those in the industry concerned to carry it into effect without their making further inventions; and (2) that the explanation must be fair i.e. it must not be needlessly difficult to follow. Numerous applicants are connoisseurs in their relevant field of technology and are very good in writing and publishing scientific articles. A patent is a techno-legal document, which involve protection for technical aspects through legal means. It involves meeting various legal requirements in drafting which is slightly different from one jurisdiction to another. After filing patent application (complete specification in India) with Patent Office, examiners at Patent Office examine and raise various formal and technical objections. One such formal objection is insufficient description of the invention. During examination stage, it is very difficult or impossible for the inventors or authors to add additional experimental data or information into the specification. That‟s how patent which is a techno legal document differs from an ordinary scientific article. Patent Specification: An Indication In patenting, an invention, the applicant for the patent must disclose his invention to the authority. Therefore a patented goods or articles are open and available to the public, though they are produced legally, from using it till the patent grant or monopoly period expires. The specification and claims of a patent, particularly if the invention be at all complicated, constitutes one of the most difficult legal instruments to draw with accuracy;

and, in view of the fact that valuable inventions are often placed in the hands of inexperienced person to prepare such specifications and claims, it is not a matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention. The contents of a patent specification, also called as „the disclosure‟, are the „written description‟ of an invention. The layout of specification varies from place to place, however the essence of contents of specification is same throughout the world, because disclosure of specification is the basis to establish novelty and non obviousness of an invention which is essential for grant of patent. Moreover, if any dispute arises, the Court of Law would settle the case based on contents of specification and the claims. Section-10 of Indian Patent Act, 1970 defines the contents of specification; although it is not an exhaustive guideline to patent applicants, it gives an outline as to the layout of specification to express the technical output of invention into written description. In USA also under Patent Act1 section 12(3),72(1)(c) need to disclose the innovation in a manner that is clear and complete enough for it to be performed by the person skilled in the Art. Moreover we look at the requirements that focus on the form and content of the claim .In particular we look at the requirements that the clams be clear and concise, be supported by the description and related to one invention. 2 Finally, we look at the requirement that the patent must not be amended in such a way that it content additional subject matter or extends the protection by the patent.3 Overview of Indian Patent Specification Section 10 and Rule 13 of the Act mainly deal with inside of specification. Accordingly, every patent specification, whether provisional or complete starts its first page with Form 2 having title (Preamble of claim 1), name, nationality and address of the applicant. Another point to be provided in Form 2 is preamble to the description, if it is provisional specification then the preamble is the following specification describes the invention and if it is complete, the preamble is the following specification particularly describes the invention and the manner in which it is to be performed. Page 2 of the specification will start with Field of the invention followed by background and prior art, objectives, brief description of the accompanying drawings if any, statement of invention, 1

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Bently Lionel and Sherman Brad , “Intellectual Property Law”, 2 Edi, Oxford Publication, Page 488. PA section 14(5)(c). 3 PA section 76(2). 2

detailed description of invention, claims in a fresh page followed by an abstract in a fresh page and drawings if any at the end. The adequacy of information pertaining to invention is usually provided under detailed description of the invention, which can be explained in various embodiments or can even be provided as examples. Sufficiency of Disclosure in Indian Provisional Specification Based on the availability of information, a patent specification can be filed either as a provisional specification or as a complete specification (non-provisional in US). To decide whether the specification needs to be filed as provisional or complete, it is recommended to applicants with insufficient experience in patent law and prosecution to consult an experienced Patent Attorney in the field of technology to which the invention belongs. The Act is silent with respect to adequacy of disclosure to be provided in a provisional specification. Generally, a provisional specification is recommended in a scenario where invention lacks sufficient information or where time is required for inventors to generate more experimental data. As a general rule, a time-line of 12 months from filing date of provisional specification is provided by almost all patent offices across the world to file provisional as a complete specification, may be with an exception of Singapore . The primary reason for silence of the Act might be that provisional applications are not subject to examination by Patent Office. Another reason could be that they are merely filed by applicants to block priority date. However, it is recommended that a provisional specification should disclose best mode of performance known to inventor at the time of filing. On the contrary, best mode known to the inventor may change over a period of time. It may happen that the best mode at the time of complete application may be different from the best mode known at the provisional filing date.4 Once a complete Indian patent specification is filed, it is impossible to add new or additional data into filed patent application. Therefore, it is recommended that one should provide all necessary information in the complete specification at the time of filing itself. Another aspect is that the information provided in the complete specification should enable Person Having Ordinary Skill in the Art [PHOSITA] or Person Skilled in the Art [PSA] or person with an average skill in the art to perform and make use of it. Failure in providing sufficient information in patent specification would attract objections from patent examiners 4

Baruah Anjana “Patent Specification: Engineering the technical output of Novel invention.”, Journal of intellectual Property Rights ,Vol ,September 2009,Page 423- 431

during prosecution. For all practical purposes, the patent examiner or controller of patents should view patent application as viewed by the PSA or average skilled person.5 Specification In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification Under Section 9, 10. Rule 13. Form-1, 2, 31. The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention. This is possible only when an applicant discloses the invention fully and particularly including the best method of performing the invention. The Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is mandatory on the part of an applicant to disclose fully and particularly various features constituting the invention. The Specification may be filed either as a Provisional or as a complete Specification. The Specification (provisional or complete) is to be submitted in Form-2 along with the Application in Form-1 and other documents, in duplicate, along with the prescribed fee as given in the First Schedule. The first page of the Form 2 shall contain: a) Title of the invention; b) Name, address and nationality of each of the applicants for the Patent; and c) Preamble to the description. The title of the invention shall sufficiently indicate the specific features of the invention. Every Specification whether Provisional or complete shall describe the invention. The applicant shall submit drawings, wherever required. The Controller may also require the applicant to submit drawings, if necessary at the examination stage. Such drawings shall form a part of the Specification and suitable references thereto shall be made in the Specification. The Controller may require the applicant to submit, anytime before the grant, models or samples related to the invention for better illustration of the invention. However, such models or samples shall not form part of the Specification. 5

Gupta Suresh Maram “Sufficiency and discloser in patent specification”, Journal of intellectual Property Rights ,Vol ,September 2009,Page 307-316

Provisional Specification (Section 9, 11A (3) (b), 32) a) When the applicant finds that his invention has reached a stage wherein it can be disclosed on paper, but has not attained the final stage, he may prepare a disclosure of the invention in the form of a written description and submit it to Patent Office as a Provisional Specification which describes the invention. b) A Provisional Specification secures a priority date for the application over any other application which is likely to be filed in respect of the same invention being developed concurrently. c) Immediately on receiving the Provisional Specification the Patent office accords a filing date and application number to the Application. d) An application accompanying a provisional specification is deemed to be abandoned if no complete specification is filed within twelve months from the date of filing of the provisional specification. However, the applicant has an option to post-date the provisional specification under Section 17, before the expiry of twelve months from the date of filing. Such request for post-dating shall not be allowed after the expiry of twelve months from the date of application. Such abandoned applications are not published. Contents of Provisional Specification a) A Provisional Specification shall essentially contain the title and description of the invention and shall start with a preamble The following Specification describes the invention.„ Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date. b) The description starts from the second page starting with the field of invention and containing the background of the invention, object of the invention and statement of the invention. c) It is advisable to include in the Provisional Specification as much information as the applicant has at the time of filing.

d) It may be noted that a Provisional Specification cannot be filed in case of a Divisional, Convention or a PCT National Phase Application. In such cases, filing a Complete Specification is a mandatory requirement. Complete Specification (Section 10) The Complete Specification is a techno-legal document which fully and particularly describes the invention and discloses the best method of performing the invention. As the Complete Specification is an extremely important document in the patent proceedings it is advised that it should be drafted with utmost care without any ambiguity. The important elements of the Complete Specification is further discussed below. It is suggested to applicants to ensure that the invention described in the specification is essentially the best method of performing the invention. Additionally, it should enable PSA to perform it in yet another aspect, Section 10(4) of the Indian Patents Act, 1970, particularly deals with contents of specification, and lists out features to be covered in a complete specification. Drafting complete patent specification in compliance with this section helps in overcoming the objections/ rejections raised by patent examiners during prosecution. Analysis of Section 10(4) of Indian Patent Act, 1970 Acceding to section 10(4), every complete specification should: a) fully and particularly describe the invention and its operation or use and the method by which it b) is to be performed; c) disclose the best method of performing the invention which is known to the applicant and d) for which he is entitled to claim protection; and e) end with a claim or claims defining the scope of the invention for which protection is claimed. f) be accompanied by an abstract to provide technical information on the invention.

Conclusion The applicant if required need to approach a Patent Agent/ Attorney before filing the patent application. Filing of provisional or complete specification has to be decided based on the information available with the inventors. A decision to file provisional specification can be taken provided if the applicant/ inventors are confident of arriving at necessary information within 12 months from the date of filing of provisional. Failure in filing complete does not pose any problem to applicant/inventor as filed provisional specification remains as a secret document with IPO. This aspect is same across various patent jurisdictions. The only loss could be loss of priority. This is vital for companies which have commercial commitments. Hence, a fair decision needs to be taken by them in such circumstances. With regard to the Interpretation of Patent Specification, Purposive construction, should be followed as it is a principle of construction of the claim language, and does not entitle the court to rewrite or amend the claim in the guise of construing it. As it was put by Lord Sutherland in Conoco Specialty Prods. Inc. v. Merpro Montassa Ltd.,6 ; “While a purposive construction is necessary, it must be borne in mind that this is indented to be a method of construction and not an excuse for not construing the claims at all”. Such an unfettered approach would be at the expense of any degree of certainty to third parties. In the end, the question is whether the absence of a feature mentioned in the claim is “an immaterial variant which a person skilled in the trade would have regarded as being within the ambit of the language.” For claming the patent the specification must be full and non ambiguus specification, moreover the legislature need the specification as to know the invention details for the benefit of the public as well as the nation. In the recent time we found many cases where the party loss there claim or suit as for the incomplete or ambiguus specification. For the betterment of the human civilization we must be follow the legal provision as prescribed in laws compiling with complete specification.

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[1994] F.S.R. 99 (Eng. Ch. 1990).