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A patent specification is a disclosure to the public at large regarding the invention. It also explains the scope of protection that the invention would receive. It gives the applicant an opportunity to provide information about the invention so they can claim protection. A patent specification is a crucial techno-legal document. It contains scientific and technical disclosures that form the basis of the rights of a patent.
Section 7(4) of the Patents Act, 1970 (the Act), requires applicants to file a provisional or a complete specification with every patent application. The Patent Rules, 2003 (the Rules), also include specific provisions that address the specification of an invention.
Provisional Specification
A provisional specification, as the name suggests, is not a complete specification. It gives a broad description of the invention and includes as much detail as possible at the preliminary stage. Its primary purpose is to secure a priority date before the inventor reveals the final details. When an applicant finds that the invention is not fully developed but is ready for disclosure, filing a provisional specification becomes helpful. A provisional specification also acts as an important precursor because it helps determine whether the complete specification falls within the ambit of the invention claimed earlier.
The applicant must file a complete specification within 12 months from the date of the provisional filing. Otherwise, the application is deemed abandoned. If an applicant has filed two or more provisional specifications and the Controller considers them cognate, the Controller may allow the filing of a single complete specification for all of them. It is also important to note that an applicant cannot file a provisional specification for a Divisional, Convention, or PCT National Phase application.
Complete Specification
A complete specification fully and clearly describes the invention that the applicant claims. The drafting must be done with utmost care and without any ambiguity. In some cases, if the applicant is still within 12 months from the date of filing the complete specification, they may ask the Controller to convert it into a provisional specification. The title, description, drawings, abstract, and claims filed for International Applications designating India are treated as the complete specification.
Essential Content of Specifications
Section 10 of the Act broadly explains the required contents of a specification. The following factors must be included in a patent specification:
Title and Technical Field
Each specification must have a title that indicates the subject matter of the invention. Applicants should ensure that the title is brief, precise, definite, clear, and unambiguous. It should reveal the specific features of the invention and should usually stay within 15 words.
The applicant must also state the field to which the invention belongs. The field of invention is a general statement that identifies the subject matter. It may also include the advantages of the invention to show its areas of application and preferred use.
Prior art and problem to be solved
The applicant must elaborate on the status of the technology in the field of the invention. If the invention improves an existing invention, the applicant should clearly state this and describe the closest prior art known to them.
Object of invention and Summary of Invention
The specification should state the objectives of the invention and the problems it aims to solve. This section may also highlight the contrast between the existing technology or prior art and the new claimed invention. The specification must include a brief summary of the invention as well.
Description and Disclosure
The description should provide enough detail to give a complete picture of the invention. It should include the nature of the improvements, examples or drawings related to the invention, and any terms in other languages, which must be accompanied by their English equivalents. Every complete specification must fully describe the invention, its operation or use, and the method of performing it. The applicant must also disclose the best method of performing the invention for which they seek protection.
Claims
The application should end with a claim or set of claims that clearly and succinctly define the scope of the invention. The claims of a complete specification relate to a single invention. If the claims cover a group of inventions, those inventions must connect in a way that forms a single inventive concept. This section is the most important part of the specification because it defines the scope of protection through the essential features. The applicant cannot claim exclusivity over anything that is not disclosed in the complete specification, and such undisclosed matter becomes open for public use.
The applicant should include as many claims as fall within the scope of the invention. The rejection of one claim does not automatically lead to the rejection of all other claims. Each claim is assessed on its own merit, so it becomes important to make claims for all relevant aspects of the invention. However, applicants must ensure that the claims are not overly broad or directed toward existing public knowledge. The goal is to secure the widest possible protection while avoiding infringement and not encroaching on the public domain.
A patent claim consists of three main parts: the preamble, the transitional phrase, and the body. The preamble identifies the category of the invention. The transitional phrase links the preamble to the body and uses words such as “comprising”, “including”, or “characterized by”. The body contains the main content, which includes the independent or principal claim and the dependent claims.
Abstract
An abstract of not more than one hundred fifty words must accompany every specification and should provide technical information about the invention. The abstract contains a concise summary of the material in the specification. This summary indicates the technical field of the invention and its principal use. It must also highlight how the invention advances beyond existing knowledge. Wherever necessary, it should include the chemical formula that characterises the invention. The abstract helps in searching within a specific technical field and allows a reader to decide quickly whether they need to review the entire specification. The Controller may amend the abstract if such changes provide better information to third parties.
Drawings, Models & Samples
If the Controller requires it, the applicant may need to provide drawings in support of the invention, and these drawings will form part of the specification. The drawings must be prepared as prescribed under Rule 15 of the Rules. If the specification includes any drawing, the same must also be reflected or indicated in the abstract. The applicant may also have to provide a model or sample, although it does not form 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 and complete specifications can both be amended in accordance with Rule 14 of the Rules. The amended parts or pages of the specification must be retyped so they form a continuous document, and the earlier corresponding pages will be treated as superseded. Any amended portions of the drawings must be clearly marked for identification, along with the reason for the amendment. The applicant must ensure that no amendments are made by pasting slips on the form, using footnotes, or writing in the margins.
Form 2
Every specification, whether provisional or complete, is submitted in Form-2 along with Application Form-1 and the other required documents, along with the prescribed fee. The form requires certain fields to be filled. The first page includes the title of the invention, the applicant’s details (name, address, nationality), and the preamble to the description, which indicates whether the specification is provisional or complete. For a provisional specification, the preamble states, “The following specification describes the invention.” For a complete specification, it states, “The following specification particularly describes the invention and the manner in which it is to be performed.”
The description follows the first page of the form. A separate page is then attached for the claims, which begin with “I/We claim.” It is usually advisable not to include claims in the provisional specification because its main purpose is to secure a priority date. However, the applicant should still include as much information as is available. The date and signature appear at the end of the last page of the specification. The abstract of the invention is provided on a separate page along with the complete specification.
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. This approach focuses on protecting new inventions while providing other inventors with 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.
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