Chapter 05

Provisional and Complete Specification

 

05.01

Specification

 

 

In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification. 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.

Section 9, 10.  Rule 13.

Form-1, 2

05.02

 

 

Provisional Specification

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.

Once abandoned for reasons mentioned above, no priority can be claimed from such application, for any other application such as divisional application etc. 

e)      If two provisional specifications filed by an applicant are cognate or if one is a modification of the other, the applicant may file one complete specification covering both the provisional applications. Such a complete specification shall have to be filed within twelve months from the date of filing of the first provisional application. In such cases, date of filing of application is the date of filing of the earliest provisional specification and shall bear the number of that application.

f)       An applicant may, within twelve months from the filing of a complete specification (not being a convention application or a PCT National Phase Application), convert the same into a provisional specification. Consequently, the applicant has to file a complete specification within twelve months from the date of first filing.

g)      A provisional specification (i.e. the one filed directly or the one converted from a complete specification) may be post-dated to the date of filing of the complete Specification.

Section 9,  11A(3)(b)

05.02.01

Provisional Specification – General

A Provisional Specification is not a rough draft or a skeleton of the Complete Specification. The Complete Specification, which follows a Provisional Specification, does not replace the latter. Both are permanent and separate documents and remain so in the file.

 

05.02.02

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.

 

05.03

Complete Specification

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 are further discussed below.

Section 10

05.03.01

Complete Specification

Every complete specification shall:

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

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

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

d)     make reference to deposit of the biological material in the international depository authority, if applicable; and

e)      be accompanied by an abstract.

Section 10(4)

05.03.02

National phase applications

In case of national phase applications, the title, description, drawings, abstract and claims filed with the international application are taken as a complete specification. (For further details of the PCT National Phase Applications, please see Chapter 7)

Section 10(4A)

05.03.03

Title

The title should be sufficiently indicative of the subject matter of the invention and shall disclose the specific features of the invention. It need not be the same as the preamble of the main claim. It shall be brief, free from fancy expressions or ambiguity and as precise and definite as possible, but it need not go into the details of the invention itself and should not ordinarily exceed fifteen words.

The following are not permissible in the title:

Inventor’s name, the word ‘Patent’, words in other languages, the abbreviation “etc”, fancy words e.g.  Washwell Soap”, “Universal Rest Easy Patent Chair”.

Rule 13(7)(a)

05.03.04

Field of the Invention and use of Invention

The description should preferably begin with a general statement of the invention so as to indicate briefly the subject matter to which the invention relates, e.g. “This invention relates to …………………”.

Thereafter, the advantages of the invention may be mentioned to bring out clearly the areas of application and preferable use of the invention. The applicant may substantiate industrial applicability of the invention in this part.

 

05.03.05

Prior Art and problem to be solved

This part should indicate the status of the technology in the field of invention with reference to developments in the field, patents and pending patent applications in the specific art. When the invention relates to an improvement on an existing product or process, a short statement of the closest prior art known to the applicant shall also be given. However, the description should fully and particularly describe the invention, by clearly distinguishing it from such a closest prior art, known to the applicant.

 

05.03.06

Objects of the Invention

The purpose of this part is to clearly bring out the necessity of the invention. It shall clearly mention the technical problems associated with the existing technology and the solution for that, bringing out the differences between the claimed invention and the prior art. The solution sought by the invention should be clearly brought out as object(s) of inventions with statements like “It has already been proposed ………………” followed by the objects which the inventions has in view e.g. “The principal object of this invention is ……………”, “Another object of this invention is ……………..”, “A further object of this invention is ………….”etc.

 

05.03.07

Summary of the Invention

The description should include a summary of invention before giving the details of the invention and the method of performing it. The statement should clearly set forth the distinguishing novel features of the invention for which protection is desired.  This part is intended to declare different aspects of the invention.

 

05.03.08

Detailed Description of the Invention

a)      Description of an invention is required to be furnished in sufficient detail so as to give a complete picture of the invention and follows the Summary of invention. The nature of improvements or modifications effected with respect to the prior art should be clearly and sufficiently described. The details of invention described should be sufficient for a person skilled in the art to perform the invention. It may include examples / drawings or both for clearly describing and ascertaining the nature of invention. Examples must be included in the description, especially in the case of chemical related inventions.

b)      The details of invention described should enable a person skilled in the art to reduce the invention into practice without further experimentation.

c)      Reference to the drawings should be specific and preferably in the following form:  “This invention is illustrated in the accompanying drawings, throughout which, like reference numerals indicate corresponding parts in the various figures. The Specification in respect of a Patent of Addition should contain at the beginning of the description, a definite statement indicating an improvement in or modification of, the original invention, and the serial number of the Application for Patent in respect of the original invention. The Specifications should also contain a short statement of the invention as disclosed in the earlier Specification.

d)     Terms in other languages, if any, used in the description should be accompanied by their English equivalents. The use of vague slang, words and colloquialisms is objectionable and shall be avoided.

e)      When a biological material is described in the specification and when such material is not available to the public and cannot be described adequately as per the provisions of the Act, such material shall be deposited in order to make the application complete. The deposit shall be made with the International Depository Authority under the Budapest Treaty, on or before the date of filing. The International Depository Authority in India is Microbial Type Culture Collection and Gene Bank (MTCC) – Chandigarh.

http://ipindia.nic.in/ipr/patent/d_inst_456.pdf.

For further information on Microbial Type Culture Collection and Gene Bank (MTCC) please visit –         http://wdcm.nig.ac.jp/CCINFO/CCINFO.xml?773]; http://www.imtech.res.in/mtcc.]

f)       Reference to such biological material shall be made in the Specification within three months from the date of filing, giving all the available characteristics of the material required for it to be correctly identified or indicated including the name, address of the depository institution and the date and number of the deposit of the material at the institution.

g)      Further, the source and geographical origin of the biological material specified in the Specification shall also be disclosed.

h)      In the case of Biotechnology related inventions, relevant numbers of the sequence listing shall be mentioned at appropriate place in the specification.

i)        Sequence listing should also be given in electronic form. However, the fees with respect to the corresponding number of pages should be paid.

j)        Access to the material is available in the depository institution only after the date of the application of patent in India.

 

05.03.09

Drawings

a)      Drawings or sketches, which require a special illustration of the invention, shall not appear in the description itself. Such drawings shall be on separate sheet(s).

b)      Drawings shall be prepared neatly and clearly on durable paper sheet.

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

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

e)      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.

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

Rule 15

05.03.10

Abstract

a)      Every complete specification shall be accompanied by an abstract to provide technical information on the invention. The abstract shall commence with the title of the invention.

b)      The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself.

c)      The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention. Where necessary, the abstract shall contain the chemical formula, which characterizes the invention.

d)     The abstract may not contain more than one hundred and fifty words. If the specification contains any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of the drawings which may accompany the abstract when published. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.

e)      The Controller may amend the abstract for providing better information to third parties.

Rule 13(7)

05.03.11

Best Method

The Act specifically requires that the complete specification must describe the best method of performing the invention known to the applicant, including that, which he may have acquired during the period of provisional protection prior to the date of filing the complete specification.

Section 10 

05.03.12

Claims

Claims define the contours of rights, if and when a patent is granted for an invention. Hence, claims are the most critical part of a Patent Application. In a complete specification the description is followed by claims. Since, claims define the scope of legal protection, it is suggested that they should be drafted carefully to cover all the aspects of the protection being sought at the same time adequately distinguishing the prior art from the claimed invention.

Section 10(4)(c)

05.03.13

Unity of invention and clarity of claims

a)      Claim(s) of a Complete Specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept.

b)      Claims shall be clear and succinct and fairly based on the matter disclosed in the specification.

Section 10(5)

05.03.14

Significance of Claims

a)      A claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected. No exclusivity is obtained for any matter described in the Complete Specification unless it is claimed in the claims.

b)      What is not claimed in the ‘claims’ stands disclaimed, and is open to public use, even if the matter is disclosed in the description. Claims define the boundaries of legal protection sought by the patentee and form a protective fence around the invention which is defined by the words and phrases in the claims.

c)      The claims shall define clearly the scope of the invention with conciseness, precision and accuracy, so that others may know the exact boundary into which they should not trespass.

d)     Each claim is evaluated on its own merit and, therefore, if one of the claims is objected, it does not mean that the rest of the claims are invalid. It is therefore important to make claims on all aspects of the invention to ensure that the applicant gets the widest possible protection.

 

05.03.15

Scope of claims

a)      Claims must not be too broad to embrace more than what the applicant has in fact invented. A Claim which is too broad may encroach upon the subject matter which is in public domain or belongs to others.

b)      However, a claim may not be too narrow also because such a Claim would not be sufficiently effective against potential infringement. An infringer would go scot-free, if the claims were too narrow and hence, the full benefit of the invention may not accrue to the inventor.

c)      Having many claims, where each claim has a different scope, allows the applicant to have a legal title to different aspects of the invention. A good drafting may begin with broad claims and develops towards claims that are narrower in scope.

d)     Terms of the claim which confuse the scope of the invention, or claims that are not specific (e.g. Any novel matter) should be avoided.

e)      A claim shall be for the protection of either a product or process, as the case may be, and shall be in one sentence according to the standard practice.

 

05.03.16

Structure of Claims

a)      The description of invention in the complete specification is to be followed by a “statement of Claims” preceded by the prescribed preamble, “I / We Claim” as the case may be.

b)      Claims should start from a fresh page, after detailed description of the invention and should be serially numbered.

c)      Each claim should be in a single sentence and should be clearly worded.

d)     A claim should not be verbose.

e)      There is no restriction as to the number of claims that can be incorporated in the specification. Applicant has to pay additional fee, if total number of claims are more than ten.

f)       Each claim should be fairly based on matter disclosed in the specification. This means that all the characteristics of the invention that form part of the Claims must be fully explained in the description.

g)      A claim should be clear in the sense that it should not cause the reader to speculate. For example, if words like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” are used, the reader may make a subjective judgment unless such expression follows some definite value.

h)      A claim must be specific and not vague, ambiguous or hypothetical in nature. Each claim should be complete so that it covers the inventive feature and enough elements around it to put the invention in the proper context.

i)        In Addition, any term, which is used in the claim, must be either found in the description or fairly inferred from the description.

j)        Trade Marks are an indication of the origin rather than the composition or content of goods, and should not be used in Patent Applications where a generic term can be used instead. Trade Marks are only permitted in Claims where it can be shown that their use is unavoidable and does not introduce ambiguity. Where Marks that are registered are mentioned, they should be acknowledged as such. If a Trade Mark is not registered, its owner should be indicated.

k)      A Claim usually consists of three parts:

-   Preamble,

-   Transitional phrase; and 

-   Body.

l)        The introductory phrase identifies the category of the invention and sometimes the purpose (for example, a machine for waxing paper, a composition for fertilizing soil).

m) The transition phrase may be words and phrases such as:

- comprising of

- including        

- consisting of

- consisting essentially of

n)      If the invention is an improvement on a product or a process existing in the prior art, the invention should be distinguished very clearly by characterizing the claim with respect to the prior art. In such cases, the claim will have two parts separated by the word ‘characterized by’ or ‘wherein’. The part coming before ‘characterized by’ is the prior art while that comes after will be the features of the invention. In the following example “A data input device” is the introductory phrase, “comprising” is the transition phrase, and the rest of the claim is the body:

    “A data input device comprising: an input surface adapted to be locally exposed to a pressure or pressure force, a sensor means disposed below the input surface for detecting the position of the pressure or pressure force on the input surface and for outputting an output signal representing said position and; an evaluating means for evaluating the output signal of the sensor means.”

o)      The first claim is always an independent claim also known as ‘Principal Claim’. It should clearly define the essential novel features of the most preferred embodiment of the process/product that constitutes the invention. The claim may be properly characterized with respect to the ‘prior art’, defining all the technical features essential to the invention or inventive concept. The claim should bring out sufficient details of interrelationship, operation or utility to establish that the invention achieves the intended objectives.

p)      There may be more than one independent claim in a single application if the claims fall under a single inventive concept.

While there is no restriction as to the number of claims, including independent claims, it is advisable to limit the number of claims, as well as the number of independent claims in a single application so that the claims are all of cognate character and are linked so as to form a single inventive concept. Inclusion of multiple independent claims directed at non-cognate aspects of the claimed invention is not desirable. If claims relate to a plurality of distinct inventions, it may be objected on ground of lack of unity of invention.

q)      A dependent claim derives antecedence from an independent claim and reads into it the features of the independent claim and may contain additional non-essential features and even the minute aspects and optional features.  As for example:

“A wrapper as claimed in Claim 1, wherein a narrow area of the tear tape, spaced from each edge of the tear-tape, is united to a narrow area of the wrapper defined on each side by a line of perforations which are covered by the outer portions of the tear-tape, the perforations facilitating tearing of the wrapper to remove the portion bounded to the tear-tape.”

“A gramophone record according to Claim 1, wherein the percentage of filler employed in the record is from 1 to 70 per cent.”

“A tool according to Claim 1, wherein the means for guiding the tool and facilitating the removal of the waste metal and the means for preventing the distortion of the spindle comprise two separate plates slidable and removable mounted on the spindle”.

r)       Further independent claims are justified where the single inventive concept covers more than one category e.g. process, product, complementary versions within one category e.g. plug and socket, transmitter and receiver, which work only together. 

s)       Claims should not contain:

                  i.            A claim which is unsearchable by reason of the number of alternatives embraced, or the choice of characterizing parameters.

                ii.            Dependent Claims that are not fully limited by the terms of the preceding independent claim, e.g. dependent claims which omit, modify or substitute a feature of an independent claim.

t)       The practice of including an omnibus claim does not have any legal basis under the Patents Act. In fact, such a claim cannot be allowed as per Section 10(4)(c) of the Act. As such claims are unclear, vague and unsearchable, it is desirable to avoid omnibus claims in a patent application.

 

05.04

Priority of a claim

Each claim of a complete specification shall have a priority date. If the complete specification is filed along with the application, the date of filing of the application is the date of the priority of the claim(s) of the specification if the claim(s) are fairly based on the matter disclosed in the specification.

Section 2(1)(w), 11

05.04.01

General

a)      When a Complete Specification is filed pursuant to a Provisional Specification, the priority date thereof shall be the date of filing of the provisional application.

b)      When a complete specification is filed based on two or more provisional specifications which are cognate, the priority dates for claims arising from each of the provisional specifications will be the date of the respective provisional specification.

c)      When a complete specification is converted into a provisional specification and a fresh complete specification is filed thereafter, the priority date of claims shall be the date of disclosure of the relevant specification in which the claimed subject matter was first disclosed.

d)     When a complete specification is filed after the provisional specification, the Controller may on the request of the applicant made any time before the grant, cancel the provisional specification and post-date the provisional specification to the date of complete specification.

e)      If the Claim is fairly based on the matter disclosed partly in one and partly in another such previous application accompanying provisional specification, the priority date of the claim shall be the date of the later filed Specification.

f)       Where a complete specification based on a previously filed application in India has been filed within twelve months from the date of that application and the claim is fairly based on the matter disclosed in the previously filed application, the priority date of that claim shall be the date of the previously filed application in which the matter was first disclosed.

g)      A claim in a complete specification of a patent shall not be invalidated by the reason only of:

a.       the publication or use of the invention so far as claimed in that claim on or after the priority date of such claim; or

b.      the grant of another patent which claims the invention, so far as claimed in the first mentioned claim, in a claim of the same or a later priority date.

Section 9, 11

 

05.04.02

Divisional application

In case of a Divisional Application, priority date of the claim(s) is the date of filing of the first mentioned application.

Section 11(4)

05.04.03

Convention application

The priority date of the claim(s) of a convention application is the date of filing of the basic application filed in the convention country.

Section 11(6), 135

05.04.04

Effect of Priority Date of a Claim

The novelty of a claim is dependant on its date of priority. Nothing published on or after the date of priority of a claim can be cited to destroy the novelty of that invention.

Section 11(8)

 

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