Patent Specification- Laws in India

A patent is a statutory right granted for a limited period to an applicant for either a product or a process. In the case of a product patent, the patentee can exclude or prevent others who do not have his consent, from the act of making, using, offering for sale, selling, or importing for those purposes that product in India. Similarly, in the case of a process patent, the patentee can exclude others from the act of using that process, and from the act of using, offering for sale, selling, or importing for those purposes the product obtained directly by that process in India.[i] But, what is right given for? This right is given in lieu of the complete disclosure of the invention made by the patentee to the common mass and this system is commonly known as “quid pro quo”, i.e. “something for something”. There are several objectives behind this system. One of the fundamental objectives is that any person who wishes to use this invention after the protection period is over, he can do so without any undue experimentation or any hit and trial. Another major objective is based on the belief that old inventions lay the foundation for new inventions. So, people who want to develop something in the same field can continue their research from already existing inventions. So, while “Necessity is the mother of invention”, new inventions are often based on the existing ones. Therefore, the patent document which discloses the invention to the public is of utmost importance. The full disclosure of a patent specification is ensured by the mandatory requirements provided in the statutes of various jurisdictions. Similarly, the Indian statute also enunciates certain mandatory requirements.

MANDATORY REQUIREMENTS OF DISCLOSURE

A patent application is accompanied by a written description known as a provisional or complete specification in India[ii] and as a non-provisional specification in the US.  While US Statute[iii] clearly elucidates the “enablement requirement” in the provision, the same is not so in the Indian Statute. However, on a careful reading of Section 10(4)[iv] of the Patents Act, 1970, this requirement can be seen to be envisaged in the Indian statute as well. The mandatory nature of the enablement requirement is clear by Section 64 which provides the grounds for revocation under the Indian laws. As per Section 64(1)(h)[v] of the Patents Act, 1970, the written description has to be lucid enough so that it enables a person skilled in the art to practice the invention. Moreover, the Indian courts have also acknowledged the enablement requirement in a plethora of orders. The enablement requirement is nothing but all the details about the invention claimed in the claims to be sufficient enough for a person having average skill and knowledge in the subject matter to which the patent belongs, for working out the invention on his own. With regard to the same, as per the Indian context, the written description shall contain the following:

1. full and particular description of the invention;

2. operation or use of the invention and method by which it is to be performed;

3. best method of performing the invention;

4. claims defining the scope of the invention;

5. abstract providing the technical information;

6. some other additional details in case of biological materials.

CONTENTS OF A COMPLETE SPECIFICATION

The provisional specification is a generic description of the invention and the complete specification is full and complete disclosure of the invention. While the provisional specification is filed to block a priority date, it is the complete specification, which plays the important role in patent prosecution as examination only starts when a complete specification is filed. In absence of a complete specification within the mandatory period, the application is deemed to be abandoned. It is this examination that ensures the mandatory requirements of a patent disclosure.

The contents of a complete specification can be ascertained by a combined reading of Section 10 and Rules, 9, 13, and 15 of the Patent Rules, 2003. While Rule 9[vi] provides the technical requirements of the specification, Rule 15[vii] discusses the technical requirements of drawings accompanying the complete specification. The contents of a complete specification which has evolved by way of legal principles and practice are as follows:

1. Title of the Invention[viii]:

The title of the invention needs to sufficiently disclose the subject matter of the invention and shall disclose the specific features of the invention. It should not ordinarily exceed 15 words.

• Field of the Invention:

This forms the beginning of the description which provides the introduction to the subject matter to which the invention relates. It can state both the general field of invention and the specific field under the generic subject matter.

• Background of the Invention:

This portion can be divided into three segments:

1. Prior art and Identification of the Technical Problem to be solved

This will be a general description of the existing technologies in the state of the art and the applicant may enlist some of the closest prior art documents in this section. As per the Manual of Patent Office Practice and Procedure, if the invention is an improvement, then the closest prior art document may also be described in this section. Once the prior art and state of the technology have been provided, then the applicant is required to identify the technical problems which were not addressed by the existing technologies and which the present invention aims to address.

1. Objects of the Invention and Proposed Technical Solution

Once the technical problem is identified, then the applicant may provide the objectives which the invention aims to address. Thereafter, a general overview of the technical solution being provided by the invention is required to be provided.

1. Advantages of the Invention when compared with Prior art

Finally, the section may end by providing the advantages of the present invention when compared with the prior art. The advantage will also help in overcoming the inventive step requirement if the same is able to satisfy the technical advance or economic significance requirement under Section 2(1)(ja) of the Patents Act, 1970.

• Summary of the Invention:

In this section, the summary of the invention may be provided which will highlight all the features of the claimed invention. This section should enumerate the distinguishing features of the invention claimed in the application. If possible, the applicant may also summarize the different aspects of the invention.

• Brief Description of the Drawings:

All the possible drawings may be described briefly in this section. A one-line description for each drawing shall suffice.

• Detailed Description of the Invention:

Following the summary and brief description of the drawings, the applicant is required to give a complete picture of the invention in this section. All preferred embodiments illustrating the nature of improvements or modifications effected with respect to the prior art and the modifications with which the invention can be used should be clearly and adequately described. In this segment, all the drawings should be explained with all the reference numerals and all possible examples describing the invention should be provided. By way of practice, examples must be included in the description, especially in the case of chemical-related inventions. In this segment, the applicant may also add all experimental data to show how the invention is better than existing technologies already available in the state of the art. Moreover, in this segment, the best method of performing the invention either by the preferred embodiment or example shall be provided as this is a mandatory requirement. The description should be in such a manner with sufficient examples and embodiments that a person skilled in the art is able to practice the invention without any further experimentation.

• Claims:

Lastly, the complete specification end with claims. Claims are the most integral and critical part of a patent application. Claims are the part of the complete specification, for which protection is provided. In order to interpret the claims, a description is required. Claims define the scope of the invention and therefore require a lot of precision and attention. Moreover, it is of utmost importance that the claims are drafted in such a manner that all the aspects of the invention are covered for which protection is being sought; and at the same time, the claims should be able to adequately distinguish the prior art from the claimed invention.

• Abstract:

Every complete specification shall be accompanied with an abstract. The abstract starts with the title of the application. The abstract should contain a concise summary of the invention described in the specification. It should indicate the technical field to which the invention belongs, a technical problem that the invention addresses, and the solution being provided by the invention. All these details are to be provided within 150 words. The abstract may also contain a reference to the figure which best described the invention.

ENDNOTES

[i] Section 48 of the Patents Act, 1970.

48. Rights of patentees.

Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee-

(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;

(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:

[ii] Section 9 of the Patents Act, 1970

9. Provisional and complete specifications- (1) Where an application, for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.

(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.

Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.

(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.

(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

[iii] 35 U.S.C. § 112 (2006).

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode

contemplated by the inventor of carrying out his invention.

[iv] Section 10 of the Patents Act, 1970

10. Contents of specifications

………….

(4)Every complete specification shall—

(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;

(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

(c) end with a claim or claims defining the scope of the invention for which protection is claimed;

(d) be accompanied by an abstract to provide technical information on the invention:…

[v] Section 64 of the Patents Act, 1970

64. Revocation of patents.—(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

………

(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;

[vi] Rule 9 of the Patent Rules, 2003

9. Filing of documents and copies, etc. — (1) All documents and copies of the documents, except affidavits and drawings, filed with patent office, shall –

(a) be typewritten or printed in Hindi or English (unless otherwise directed or allowed by the Controller) in large and legible characters not less than 0.28 centimetre high with deep indelible ink with lines widely spaced not less than one and half spaced only upon one side of the paper;

(b) be on such paper which is flexible, strong, white, smooth, non-shiny, and durable of size A4 of approximately 29.7 centimetre by 21 centimetre with a margin of at least 4 centimetre on the top and left hand part, and 3 centimetre on the bottom and right hand part thereof;

(c) be numbered in consecutive Arabic numerals in the centre of the bottom of the sheet; and

(d) contain the numbering to every fifth line of each page of the description and each page of the claims at right half of the left margin.

(2) Any signature which is not legible or which is written in a script other than English or Hindi shall be accompanied by a transcription of the name either in Hindi or English in capital letters.

(3) In case, the application for patent discloses sequence listing of nucleotides or amino acid sequences, the sequence listing of nucleotides or amino acid sequences shall be filed in computer readable text format along with the application, and no print form of the sequence listing of nucleotides or amino acid sequences is required to be given.

(4) Additional copies of all documents shall be filed at the appropriate office as may be required by the Controller.

(5) Names and addresses of applicant and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for their identification.

[vii] Rule 15 of the Patent Rules, 2003

15. Drawings.—(1) Drawings, when furnished under section 10 by the applicants otherwise than on requisition made by the Controller, shall accompany the specifications to which they relate.

(2) No drawings or sketch, which would require a special illustration of the specification, shall appear in the specification itself.

(3) At least one copy of the drawing shall be prepared neatly and clearly on a durable paper sheet.

(4) Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3cm at the bottom and right hand of every sheet.

(5) Drawings shall be on a scale sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings.

(6)Drawings shall be sequentially or systematically numbered and shall bear—

(i) in the left hand top corner, the name of the applicant;

(ii) in the right hand top corner, the number of the sheets of drawings, and the consecutive number of each sheet; and

(iii) in the right hand bottom corner, the signature of the applicant or his agent.

(7) No descriptive matter shall appear on the drawings except in the flow diagrams.

[viii] Rule 13(7)(a) of the Patent Rules, 2003

13. Specifications.—

………

(7) (a) The abstract as specified under clause (d) of sub-section (4) of section 10, accompanying the specification shall commence with the title of the invention. The title of the invention shall disclose the specific features of the invention normally in not more than fifteen words.