Patent applicants are sometimes unsure of whether working models or invention samples must be submitted when filing for an Indian patent; or, if a model or a sample is indeed required, the form and manner of such submissions. Under Indian law, there is no requirement to either mandatorily or voluntarily submit models or samples along with an application; such submissions are necessary only upon a request made by the Controller. It is, nevertheless, useful to understand when such models or samples may be required and be prepared accordingly.

The law on models and samples

The statutory provision for the submission of models or samples is contained in Section 10(3) of the Patents Act, 1970 ("the Act"):

"If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification."

Section 10(3) thus clearly states that a sample or model need be submitted only if the Controller so requires. Rule 16 of the Patents Rules, 2003, re-emphasises this point: "Models or samples shall be furnished under section 10 only when required by the Controller".

As "further supplements"

To understand why the Indian Patent Office ("IPO") may insist on the submission of a model or a sample in certain cases, the phrase "further supplement" in Section 10(3) is instructive. By itself, it would mean an addition to what may seem insufficient. If the IPO is not convinced by a disclosure in an application, it can ask for a model or a sample to corroborate or verify the disclosure. Such supplementary submissions may also be required where the disclosure (i.e., the specification and drawings) fails to satisfactorily describe the invention or describe its method of operation or use (e.g., a lack of sufficient examples, experimental data, drawings, description, etc.).

Often, inventors and applicants are tempted to withhold part of the disclosure for fear of divulging too much information to competitors. But a fundamental principle of patent law is that the inventor or applicant fully disclose the invention in return for the monopoly granted by a patent. The requirement to fully disclose the invention is contained in Section 10(4) of the Act: "Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed". Courts and judicial bodies have reiterated that patent applications should help persons skilled in the art to reproduce and practice the invention conveniently without undue experimentation. Not meeting this requirement may lead to the application being refused.

For "better illustration"

Models or samples are sometimes required for better illustration of the invention. This requirement may be raised if an examiner has doubts about the feasibility of the invention, i.e., whether the invention by itself is an empirical possibility, or whether it is a mere iteration of an abstract theory. In such cases, the examiner may seek proof that the invention works. For example, where an invention seemingly violates principles of natural laws, such as perpetual motion machines, a model may be sought to verify that the invention works.

In Indian Patent Application ("IPA") No. 1451/MUM/2013, the Controller raised an objection: "The application should be further supplemented by experimental data or working model to illustrate the invention in accordance with section 10(3) of the Patents act such that the invention as claimed is operable and doesn't violate basic established natural laws and scientific principle". The applicant did not submit a model or experimental data, and the application was refused.

Procedure for submitting models or samples

The requirement of submitting working models or samples is generally raised in a first examination report or hearing notice. To fulfil this requirement, it is not necessary that a model be submitted at the IPO; it may be met by sending a video illustrating the working of the product.

Similarly, in an application directed towards a method, a video showing the method may be submitted. If the objection is raised in a hearing notice, the applicant may show the working model during the hearing itself. An applicant may also choose to show a working model of their own volition during the hearing. While such models do not form a part of the specification, showing the model during a hearing allows the examiner to clearly see what has been invented. In IPA No. 1033/DEL/2009, although there was no objection and the Controller had not made a specific request, during the hearing, the applicant showed a model, and filed actual pictures of the invention to supplement line drawings previously submitted with the application. The patent was granted.

Good practices to follow

Even though the IPO may not require models or samples in every case, there are certain good practices for inventors and applicants to follow.

Preparing models and samples in advance

Models and samples may be prepared in advance, in anticipation of a request raised by the Controller. These may be in the form of prototypes, experimental data, 3-D models, etc. Having a working model or prototype helps better understand what is sought to be claimed. Additionally, if an application invites a hearing notice, discussions with the Controller are easier if prototypes are brought to the hearing sessions.

Samples or models may be built, stored and recorded even after an application is filed, since they need not be submitted voluntarily. In general, a model or a sample may include a tangible, real life, 3-D model of the invention, which may be submitted by way of a video, image, etc., when responding to an office action.

Illustrations as substitutes

One manner of producing a model or sample may include providing supplementary illustrations and explanations. This would potentially forgo the need to submit a prototype. For example, in IPA No. 2495/MUM/2008, which relates to a device that provides a power source for the charging of a mobile phone, the applicant provided an additional illustration that included a basic break down of the elements of independent claim 1 and the corresponding explanation of the connections and working of those elements. The Controller accepted this by way of a submission in response to the request for a model or sample.

Do not over-disclose

Care must be taken that the model or sample does not disclose subject matter that is in addition to what is already disclosed in the application. Such additional matter will not make the application any more patentable than what it already was while filing or making amendments.

Further, any additional subject matter may potentially form altogether new intellectual property ("IP") and its careless disclosure may jeopardize the applicant's rights on that new IP. Also, mere submission of additional subject matter through a model or sample may not be protectable by way of the submission itself, since protection is limited and defined by the claims in the application, and not by the model or sample. The risk of submitting additional subject matter may be particularly high in cases where multiple related patents are derived from a single product, and a prototype of the single product is submitted in response to an office objection.

Provide proper and complete disclosures

Inventors and applicants should not presume that the submissions of models or samples guarantee the grant of a patent in India. The basic principle must be to provide a proper and complete disclosure of the invention when filing the application, to avoid receiving objections warranting the submission of models or samples in the first place.

Besides using clear and definitive language and correct grammar to describe the invention, certain other aspects may be considered: describe an immediate environment in which the invention is employed; iterate as many examples of the invention as possible; provide experimental data (if available); and submit well-drafted drawings to help a person skilled in the art visualize and practice the invention.

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.