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
ADEQUACY OF DISCLOSURE IN INDIAN PROVISIONAL SPECIFICATION
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.
ADEQUACY OF DISCLOSURE IN COMPLETE SPECIFICATION (SECTION 10)
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.
CONTENT FOR THE COMPLETE SPECIFICATION
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.
REPERCUSSIONS OF NOT MAKING SUFFICIENT DISCLOSURE IN PATENT SPECIFICATION
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
RECOMMENDATIONS ON OVERCOMING THE PROBLEM OF SUFFICIENCY OF DISCLOSURE
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”.