India: Impact Of Sufficient Disclosure Of Invention In Patent Specification

Old Latin saying "Do ut des"- which means give and you will be given; Principle of reciprocity

Principle of reciprocity can be apply to the Indian patent system in which the patent office invites applicant/ inventors to sufficiently disclose information regarding the invention in a patent specification for grant of patent. The effect of the grant of a patent is based on "this for that" (quid pro quo). "This" is the knowledge disclosed to public in specification and "that" is the monopoly granted for a term of patent. After 20 years of monopoly right, the information provided in patent specification is opened for 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. An invention is patentable if it fulfills the 3 main criteria of patentability i.e. novelty, inventive step and industrial applicability. In order to obtain monopoly, applicants require disclosing technical information pertinent to these three fundamentals in a patent specification. The patent application is then filed with appropriate Patent Office. 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.1


Based on the availability of information, a patent specification can be filed either as a provisional specification or as a complete specification. 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 quiet 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 Indian patent office to file provisional as a complete specification.

However, it is recommended that a provisional specification should disclose best method of performance known to inventor at the time of filing. On the contrary, best method 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.


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.

For instance to understand fully and particularly describe the invention, if an inventor has invented 'synergistic pharmaceutical composition" and knows that he has to combine 2 different drugs in ratio of 1:2.5, but discloses in specification the experimental data only for the final synergistic composition and not for the individual drugs alone and other combinations tried by him to draw a conclusion on proposed ratio, then it is not fully and particularly describing the invention. In this case, the inventor should disclose the data independently for all the 2 drugs, followed by various combinations of drugs at different ratios which helped him to arrive at ratio specific or concentration specific synergistic composition. Such a disclosure would enable person skilled in the art to prepare synergistic composition and also give him an idea about critically of the ratios or concentration of each drug in the final synergistic composition.

To understand the "best method of performing the invention", if an invention knows that a temperature of reactant mixture should be maintained at 30oC for obtaining the pure, good yield and novel active pharmaceutical ingredients (API) but discloses in the specification that the reactant mixture should be maintained to above 25oC, then the applicant/inventor has failed to disclose the best method for carrying out the invention. Therefore it is the duty of the inventor to provide all such critical aspects in the invention to enable average skilled person to perform the invention.

For instance in a case, Press metal corporation limited vs Noshir Sorabji pochkhanawalla2, it was held that the invention is described in an obscure and ambigious language and on this ground, the patent is liable to be refused. Therefore it is evident from this case law that the patent specification should be described in a simple English language and should not contain any information which creates ambiguity to readers.


It is suggested to applicants to ensure that the invention described in the specification is essentially the best method of performing the invention.

Information provided in the complete specification should enable Person Having Ordinary Skill in the Art or Person Skilled in the Art or person with an average skill in the art to perform and make use of it.

Additionally, it should enable person skilled in the art 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.

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.


It is impossible to add additional information into patent application which is already filed with IPO. However small typographical errors can be done after filing. For the same a request can be made with IPO in from 13 accompanied by appropriate fee.

Objections can be raised by the examiner/controller during the prosecution of patent application.

Can be used as a ground for pre grant opposition by any person before the grant of patent application, Similarly after the grant of patent also it can be opposed under post grant opposition by person interested.

Can be revoked by any third party at a later date under the grounds specified in Section 64(1).

Similar consequences can be faced by the application in other jurisdictions, particularly in US, EP and JP.3


Consult a patent attorney in the relevant filed of technology to which the invention belong .take their opinion towards filing of patent application as provisional /complete specification.

If provisional is to be filed, ensure that the applicant/ inventors are describing the best mode of invention which they are aware of at that particular point of time.

Ensure claims are provided in provisional specification are provided. Claims can be drafted in broadest possible manner, which can be subsequently be narrowed at the time of filing complete.

If a complete specification is to be filed, ensure that the invention is fully and particularly described. Also ensure that the best mode of performing the invention is provided in the specification. Because at a later date it is impossible to add additional information into specification.

Additional information if necessary can be submitted to IPO during prosecution as a response to first examination Report. However same can not be included in the complete specification. Also its acceptance is totally subject to the discretion of the controller. If required submission can be made in an affidavit.4


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 vagueness. Further filing of provisional or complete specification has to be decided based on the information available with the inventors. A decision to file provisional specification should be taken if the applicant/ inventors are confident that necessary information would be able within 12 months from the date of filing of provisional.

Failure in filing complete does not cause any problem to applicant/inventor because filed provisional specification remains as undisclosed document with IPO. The only loss could be loss of priority. Hence, a fair decision needs to be taken by them in such circumstances.

In the recent time we found many cases where the party loss there claim or suit as for the incomplete or vague specification. Thus it can be said that "sufficiency of disclosure" in patent specification is very important not only from patentability point of view, but also helps public to make use of the same after 20 years monopoly o patent. In addition it is helpful for companies which are manufacturing the product before expiry of the patent for marketing approval under "Bolar provision".


1 Halsbury, 3rd edn. Vol.29p. 66 para 138.

2 Press Metal Corporation limited vs Noshir Sorabji Pochkhanawalla, 1982 PTC 259(Bom)

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

4 Gupta Suresh Maram "Sufficiency and discloser in patent specification", Journal of intellectual Propert Rights ,Vol ,September 2009,Page 307-316

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Vaish Associates Advocates
Intepat IP Services Pvt Ltd
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Vaish Associates Advocates
Intepat IP Services Pvt Ltd
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions