India: Patent Specification - Where The Rubber Meets The Road

Section 10(4) of the Patents Act , 1970

" ... every complete specification shall- fully and particularly describe the invention and its operation or use and the method in which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection..."

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 of the Patents Act, 1970. The requirement for an adequate disclosure of the invention in the specification ensures that the public receives knowledge, know-how and research in return for the exclusionary or monopolistic rights that will be granted to the inventor/applicant in an application for patent.

The relevance or say importance of the specification can be seen in the landmark judgement of the Supreme Court in the case of Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries1, where the court had made reference to Arnold v. Bradbury2, to arrive at the principle that the proper way to construe a specification is not to read the claims first and then see what the full description of the invention is, accordingly the description of the invention needs to be read first, in order for the reader's mind may be prepared for what it is, that the invention is to be claimed and also for the patentee that he cannot claim more that he desires to patent. From the above discussed case, it is well understood that the specification is the important aspect of an invention. When the meaning of a term in a claim is not clear, the description will be relied upon to understand the term in context of what is described in the specification. A complete specification in whole is important for an invention.

Essential components of a complete specification are description, claims, drawings, abstract and sequence listings, if any. All these essentials combine to form a complete specification. The goal behind the full disclosure of the invention in the specification part is that a person skilled in the art may be able to perform the invention or more preferably an ordinary person can able to understand the invention upto maximum extent.

Function of the specification :

The patent specification is designed to convey the full disclosure, particularly including the best method of performing the invention.

Contents of Specification: Section 10 of the Patents Act, 1970, clearly defines the various contents of specification:

  1. Title of the patent invention
  2. Background of the invention
  3. Summary of the invention/ Object of the Nvention
  4. Explanation if any of the patent drawings
  5. Description of the invention
  6. Patent Claims
  7. Patent Abstract of the disclosure
  8. Sequence listing, if any

Title of the Invention:

The title should give a fair indication of the art or industry to which the invention relates. It should be brief, free from fancy expressions, free from ambiguity and as precise and definite as possible but it need not go into the details of the invention itself and should be normally within 15 words. It should verbally agree with the title stated in application. The followings are not allowable 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". The following titles do not appear to be objectionable: Improved folding chair; railway rail chair; improvements in pneumatic tyres; motorcar differential gear; filaments for electric lamps; etc.

Field of the 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.

Patent Abstract

  1. 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.
  2. 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.
  3. 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.
  4. 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.
  5. The Controller may amend the abstract for providing better information to third parties.

Summary of the invention:

The nature of the invention and technology domain is written in the summary of the invention. It also includes main points of the detailed description of the process, machine, manufacture or composition of matter. The advantages of the invention are discussed in the summary too. The summary represents the general idea of the invention in a summarized form. The problems which existed previously and were identified in the background of the invention are pointed out in the summary with their solutions.

Patent Drawings:

A number of figures with numeral labelling are described and specified in patent drawings. These descriptions and specifications point out the patent claims of the invention. The invention is described visually with the help of patent drawings. Drawings are made using structures – chemical or mechanical and charts and graphs depending upon the technology. While submitting the drawing sheet, at the right and left top corners of the sheet shall include name of an applicant and total number of drawing. Whereas, every drawing sheet ends with a signature either of an applicant or the agent authorizes by the applicant at the right bottom corner.

Patent Claims:

The most important part of the patent applications are patent claims. The subject matter of the invention which distinguishes the invention from what is old is written in the claims. Patentability of an invention is judged by the patent claims as it defines the scope of the invention. The major function of the patent claim or independent patent claims is to clearly define the scope of protection granted. The patent claims must be supported by the invention disclosed in the descriptive part of the patent drafting. The patent claims should be drafted from a new page and each patent claim should be written in a new sentence. A reference numeral is followed to mention the patent claim and to illustrate the patent drawings. However, the patent claims of a patent specification must relate to the same invention.

Background of the Patent Invention:

Background of the invention contains references related to specific documents which are related to the invention. The improvements needed by the invention should be discussed in the background of the invention. Prior patent applications are identified and written in the background section of the patent document. Key features of the current invention and prior art are compared and discussed.

Detailed Description of the Patent Invention

  1. The description of an invention is required to be furnished in sufficient detail so that a complete picture of the invention can be obtained easily. Further, the nature of improvements or modifications effected with respect to the prior art should be clearly and sufficiently described. The details of invention described here should be sufficient for a person skilled in the art to perform the invention by developing necessary technical know-how by himself. It can include examples / drawings or both for clearly describing and ascertaining the nature of invention. Sufficient number of examples must be included in the description especially related to the chemical inventions.
  2. 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 letters indicate corresponding parts in the various figures".
  3. 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 should be quoted. The specifications should also contain a short statement of the invention as disclosed in the earlier specification.
  4. 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 should be avoided.
  5. If the invention is using biological material, such a material shall be deposited for the completion of the application when such material is not available to the public and cannot be described adequately as per the provisions of the act. The deposition shall be made with the International Depository Authority under the Budapest Treaty, on or before the date of filing/priority. The International Depository Authority in India is Microbial Type Culture Collection and Gene Bank (MTCC) –Chandigarh.
  6. Reference of such 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.
  7. Further, the source and geographical origin of the biological material specified in the specification also should be disclosed therein. viii) Sequence listing may also be numbered in the specification if necessary in the case of Biotechnology Inventions.
  8. Sequence listing should be given in electronic form.
  9. Access to the material is available in the depository institution only after the date of the application of patent in India or after the date of the priority, if a priority is claimed.

Requirements for complete specification :

Rule 9 of the Patents Rules, 2003, clearly highlights the requirements while drafting the complete specification. All documents and copies of the documents, except affidavits and drawings, filed with patent office, shall –

  1. 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;
  2. 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;
  3. be numbered in consecutive Arabic numerals in the centre of the bottom of the sheet; and
  4. 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.

In case of submission of sequence listing, sub rule 3 of rule 9, 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.

Conclusion

It is true to said that the Patent specification is the face of an invention. It helps in understanding the main aspects of the invention and what an invention tries to say. The complete specification should be the applicant's most complete attempt at describing and defining the invention. The complete specification should generally be a self-contained document with respect to the invention. At most care is to taken when drafting the complete specification and in the manner as defined relevant section and rule of the Patents Act, 1970.

Footnote

1 http://www.bananaip.com/ip-news-center/case-noteinventive-step-case/

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.

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