A patent specification is a disclosure to the public at large regarding the invention as well as the scope of protection that would be granted to the invention. It provides an opportunity for the applicant to provide information regarding the invention in order to be entitled to claim protection. It is a crucial techno-legal document constituted by scientific and technical disclosures which designate the basis of the rights of a patent.
Section 7(4) of the Patents Act, 1970 (the Act) directs that every patent application shall be accompanied by a provisional or a complete specification. The Patent Rules, 2003 (the Rules) also particularly deal with the specification of an invention.
Provisional Specification
A provisional specification, as the name suggests, is not a complete specification. It is a broad description of the invention and contains as much detail as possible at the preliminary stage. The primary purpose of the provisional specification is to be able to claim a priority date before the inventor discloses the final details. Usually, when the applicant discovers that their invention is not at the final stage but is developed enough to be disclosed, then filing a provisional specification becomes helpful. However, a provisional specification is still considered an important precursor as it is a factor in deciding whether the complete specification is within the ambit of the invention claimed under the provisional specification. A complete specification has to be filed within 12 months from the date of filing of the provisional specification; otherwise, it would be deemed to be abandoned. Suppose there are two or more provisional specifications, and the Controller determines that these are cognate. In that case, the applicant may be allowed to file a single complete specification in their regard. It should also be noted that a provisional specification cannot be filed if the application is a Divisional, Convention or PCT National Phase application.
Complete Specification
A complete specification, therefore, fully and particularly describes the invention that is claimed. It should be drafted with the utmost care and without any ambiguity. In certain cases, if the applicant has not exceeded 12 months from filing the complete specification, they may request the Controller to convert the complete specification to a provisional specification. The title, description, drawings, abstract and claims filed with regard to International Applications designating India would be taken as the complete specification.
Essential Content of Specifications
Section 10 of the Act broadly deals with understanding the contents of the specification. The following are important factors to be included in a patent specification:
Title and Technical Field
Each specification must have a title which is sufficiently indicative of the subject matter of the invention. Applicants should ensure that it is brief, precise, definite and free from any fancy expressions or ambiguity. The title of the invention should disclose the specific features of the invention, usually within 15 words.
The applicant must also state the field in which the invention belongs. The field of invention should be a general statement to indicate the subject matter. It can include the advantages of the invention to indicate the areas of application and the preferable use.
Prior art and problem to be solved
The status of the technology in the field of invention must be elaborated. If the invention is an improvement over an existing invention, then the applicant should give a statement to that effect of the closest prior art known by the applicant.
Object of invention and Summary of Invention
The specification should also state the objectives of the invention and the problems it aims to solve. This part of the specification can draw a contrast between the existing technology/prior art and the new claimed invention. The specification must also include a brief summary of the invention.
Description and Disclosure
The description should be furnished in sufficient detail, which gives a complete picture. It includes the nature of improvements, examples/drawings related to the invention, terms in other languages (if any) that should be accompanied by their English equivalents etc. Every complete specification must describe the invention fully and particularly along with its operation or use and the method by which it is performed. The applicant must disclose the best method for performing the invention for which they are entitled to claim protection.
Claims
The application should end with a claim/claims succinctly and clearly defining the scope of the invention. The claims of a complete specification will be related to a single invention. If the claims pertain to a group of inventions, then the inventions must be linked in a manner that forms a single inventive concept. This is the most important section of the specification as it helps determine the scope of protection granted by enumerating the most essential features of the invention. No exclusivity can be claimed over anything which is not disclosed in the complete specification and would subsequently become open to public use.
Further, the applicant should include as many claims which fall under the scope of the invention. Merely because one claim is rejected does not automatically cause a rejection of all the other claims. Each claim is evaluated on its own merit and it becomes important to make claims on all aspects of the invention. However, applicants should note that the claims cannot be overly broad and claim something which exists in the public domain. The balance to be achieved is such that the applicant gets the widest protection possible to avoid potential infringement but also does not encroach into pre-existing knowledge in the public domain.
A claim consists of three parts, mainly, i.e. the preamble, the transitional phrase and the body. The preamble demarcates a category of invention; the transitional phrase connects the preamble to the body and includes words such as “comprising”, “including”, “characterized by”, etc. The body includes the main content, which is characterised by the independent claim or the principal claim and the dependent claims.
Abstract
An abstract of not more than one hundred fifty words, which provides technical information on the invention, must accompany every specification. The abstract contains a concise summary of the matter contained in the specification, where the summary indicates the technical field to which the invention belongs and the principle use of the invention. Additionally, the abstract must also contrast the advancement of the invention with the existing knowledge and wherever required, it should contain the chemical formula that characterises the invention. It acts as an efficient instrument for searching in a particular technical field and also to ascertain at a glimpse whether a person searching should consult with the entire specification or not. The Controller has the option to amend the abstract to provide better information to third parties.
Drawings, Models & Samples
If the Controller requires, the applicant may have to provide drawings in support of the invention which will form a part of the specification. These drawings should be prepared as is prescribed by Rule 15 of the Rules. If a specification contains any drawing, then the same must also be replicated or indicated in the abstract. Further, the applicant may even have to provide a model or sample illustrating the invention; however, this will not form a part of the specification.
Biological Material
The applicant may be required to deposit a biological material, which cannot be fully described, or its operation/use/best method cannot be specified, to an international depository authority under the Budapest Treaty. Applicants must carry this out in compliance with the conditions laid out under Section 10 of the Act. The Patent Manual provides a list of the International Depository Authority in India, which can be accessed at point 05.03.09.
Amendments
Provisional as well as complete specifications can both be amended in accordance with Rule 14 of the Rules. The amended part/pages of the specification should be retyped so as to form a continuous document, and the corresponding earlier pages will be deemed to be superseded. The portions of the drawings which are amended must be marked for identification, along with the reason behind the amendments. An applicant is to ensure that no amendments are made by either pasting slips on the form or through footnotes or by writing in the margins.
Form 2
Every specification, be it provisional or complete, is submitted in Form-2 along with the Application Form-1 and other documents with the prescribed fee. The form stipulates certain fields be populated. The first page contains the title of the invention, details of the applicant (name, address, nationality) and the preamble to the description, which indicates whether the specification is provisional or complete. In the case of a provisional specification, it states, “ The following specification describes the inventions”. In contrast, for a complete specification, it states, “The following specification particularly describes the invention and the manner in which it is to be performed”.
The first page of the form is followed by the description. Subsequently, a separate page is attached that contains the claims and begins with “I/We claim”. It is usually advisable not to include claims in the provisional specification as the purpose of filing a provisional specification is to claim a priority date. However, the applicant should include as much information as is available. The date and signature are given at the end of the last page of the specification. The abstract of the invention is provided along with the complete specification on a separate page.
Conclusion
The procedure provided for patent specification under Indian law is comprehensive, clear and conducive to the inventor/applicant. It ensures that the applicant has sufficient opportunities to claim protection. The approach for complete specifications indicates that the focus is on protecting new inventions and allowing other inventors to have an efficient repository of information. The applicants must familiarize themselves with various provisions of law while filing specifications, particularly the Patents Act 1970, the Patent Rules 2003 and the Manual of Patent Office Practice and Procedure.
