In India, the applicant filing an application for a grant of Patent is required to file for Specification of Patent to get a Registration of Patent under the Patent Act, 1970. The applicant has the option of filing a Provisional or Complete Specification. The Provisional Specification can be filed when the application has not reached the final stage of the invention but is at the first stage but wants to secure a prior date for his/her invention.
On the other hand, Complete Specifications are filed when the invention is prepared fully and the applicants want to get a Registration of Patent in India. As per the Patent Act, 1970, it is mandatory for the applicant to file for the Specification of Patent in India. In this article, we will discuss in detail the Provisional or Complete Specification of Patent in India.
What is a Specification of Patent in India?
The provisions related to Specification of a Patent in India are provided under Section 9, 10, 57, 59 of the Patent Act, 1970 and Rule 13, 14, 24A of the Patent Rules, 2003. The Specification of a Patent is a techno-legal document that contains technical and scientific claims and disclosures related to the invention which are the basis of rights associated with the Patent. The Specification, thus, forms a crucial part of the patent application. As per the Patent Act, 1970, and the Patent Rules, 2003, a Patent Specification can be filed either as a Provisional or Complete Specification.
The Provisional or Complete Specification is required to be submitted in Form-2 as prescribed under the Patent Act, 1970, and the Patent Rules, 2003[1]. The Form-2 is also required to be filed along with an Application Form-1 and other required documents together with the fees prescribed as provided in the First Schedule.
As per the Patent Act, 1970, and the Patent Rules, 2003, the first page of Form – 2 should contain the following essentials:
- The Title of the invention;
- The Name of each of the applicants for Patent;
- The Address of each of the applicants for Patent;
- The Nationality of each of the applicants for Patent; and
- The Preamble to the Description. The basic requirements for the Preamble to the Description are as follows:
- If any person files the Provisional Specification of a Patent, the Preamble is required to be as under: “The following Specification describes the invention”.
- If any person files the Complete Specification of a Patent, the Preamble is required to be as under: “The following Specification particularly describes the new or original invention and the complete manner in which it is to be performed.”
- The title of the new or original invention should disclose the definite features of the invention generally in not more than 15 words. The applicant of the application for grant of Patent is required to submit the necessary drawings, wherever required. Further, the Controller of Patent can also require the applicant to submit drawings, if required, at the stage of examination.
- Such drawings shall form a part of the Specification of Patent and suitable references thereto should be made in the Patent Specification. The Controller of Patent may require the applicant of the application for grant of Patent to submit, at any time before the grant, samples or models related to the new or original invention of the inventor for better illustration of the invention. However, such samples or models should not form part of the Patent Specification.
What are the requirements for filing amendments to the Specification of Patent?
The essential requirements for filing amendments to the Specifications of Patent are as follows:
- When any amendments are made to a Provisional or Complete Specification of a Patent or any drawing accompanying the invention, the pages including such amendments should be submitted and retyped to form a continuous document.
- A marked copy clearly identifies the amendments that are carried out and a statement clearly indicates the portion (line number and page number) of the Specification of Patent or any drawing that is being amended along with the reasons in detail should also be filed.
- Amendments in a Specification should not be made by some slips pasted on, or as footnotes or by writing along the margins of any of the said documents.
- When a retyped page or pages including amendments are submitted, the conforming earlier page or pages should be deemed to have been cancelled and superseded by the applicant of the application for grant of Patent.
What is a Provisional Specification of Patent?
- When the applicant of the application for grant of Patent finds that his/her invention has reached a phase where the invention can be disclosed but the final phase of the invention has not attained by it, he/she may go for a preparation of a disclosure of the invention in the form of a description in written form and submit such description of the Patent at the Patent Office as a Provisional Specification of Patent.
- The filing of a Provisional Specification secures a date of priority for the application of Patent.
- As per Section 9(1) of the Patent Act, 1970, an application that is filed with the Provisional Specification is deemed to be abandoned if no Complete Specification is filed within the time period of 12 months from the date on which the Provisional Specification was filed with the Patent Office.
- Under Section 9(2) of the Patent Act, 1970, if in the opinion of the Controller of Patent, two or more Provisional Specifications are filed by an applicant are similar, or if one Specification is a modification of the other Specification, he/she can allow the applicant to file one Complete Specification with regard to all such different Provisional Specifications. Such a Complete Specification is required to be filed within the time period of 12 months from the date on which the first provisional Specification of Patent was filed. In such cases where Controller asked to file one Complete Specification for two or more Provisional Specifications, the date of filing of the application will be considered the date on which the earliest Provisional Specification was filed and should also bear the number of that earliest application.
- A request can be made by the applicant, within 12 months from the date of filing of a Complete Specification (not being a PCT National Phase application or a convention application Application) to the Controller of Patent to convert the Complete Specification so filed by the applicant into a Provisional Specification.
- Subsequently, the applicant is required to file a Complete Specification within 12 months from the date of the first filing of the application. Under Section 9(3)(f) of the Patents Act, 1970, after filing a Complete Specification of Patent, the applicant can make a request to the Controller of Patent at any time before the grant of Patent to cancel the Provisional Specification filed by him/her (i.e. the Provisional Specification filed directly under Section 9(1) of the Patent Act, 1970, or the Provisional Specification that was converted from a Complete Specification under Section 9 (3) of the Patent Act, 1970), the Controller of Patent can cancel the filed Provisional Specification and post-date the application filed to the date of filing of the Complete Specification by the applicant.
Read our article:General Powers of Controller of Patent in India
What are the contents of the Provisional Specification of Patent?
A Provisional Specification of Patent is a techno-legal document that defines the invention and it is followed by a Complete Specification. The contents of a Provisional Specification are provided under Section 10 of the Patent Act, 1970.
The essential contents of a Provisional Specification are as follows:
- A Provisional Specification should essentially contain the description and title of the invention of the inventor.
- It is desirable not to include any of the claims in the Provisional Specification as the primary purpose of filing a Provisional Specification is to claim a date of priority and it is only intended for describing the invention.
- The description of the invention starts from the second page with the field of invention, the main object of the invention, the background of the invention, and the statement of the invention.
- It is advisable to the applicant of the application to include as much information as the applicant has in a Provisional Specification, at the time of filing of such Specification.
- It should be noted that a Provisional Specification cannot be filed by the applicant in case of a Convention, Divisional, or PCT National Phase Application with the Patent Office.
Bullet Points:-
What is a Complete Specification of Patent?
- Complete Specification of Patent is a techno-legal document which particularly and fully describes the invention and also discloses or reveals the best technique of performing the invention. In the Patent proceedings, a Complete Specification is an important document; it is advised to the applicant that Complete Specification is required to be drafted with the highest care and should be without any ambiguity.
- It is compulsory on the part of the applicant to disclose particularly and fully numerous features establishing the invention. The disclosures of an invention in a Complete Specification should be such that a person of average knowledge and skill in India should be able to perform the invention of the applicant based on the descriptions and other required details that are disclosed in the Complete Specification of a Patent by the applicant.
What are the contents of the Complete Specification of Patent?
The essential contents of Complete Specification of Patent are as follows:
- A Complete Specification filed by the applicant should particularly and fully describe the invention of the applicant and the use or operation of the invention and the method by which the invention is performed;
- A Complete Specification should disclose or reveals the best method of performing the invention of the applicant which is known to the applicant for which he/she is entitled or permitted to claim protection for the invention;
- A Complete Specification is required to end with a claim or set of claims defining or describing the scope of the new invention for which the protection is claimed by the applicant;
- A Complete Specification should also make a reference for the deposit of the biological material related to the invention in the International Depository Authority, in case it is applicable;
- A Complete Specification should disclose the geographical origin and source of the biological material related to the invention that is specified in the Specification;
- A Complete Specification should be accompanied by an abstract;
- A Complete Specification should not include any irrelevant or other subject matter, which is not necessary for the explanation of the invention of the applicant, from the title, claims, description, and drawings filed by the applicant.
- In the case of Complete Specification for a Divisional Application under the Patent Act, 1970, it should contain a specific reference to the total number of original applications filed by the applicants from which the Divisional Application of invention is made.
- In the case of a Complete Specification for a Patent of Addition under the Patent Act, 1970, it should contain a specific reference to the total number of main Patent or Application for the grant of Patent, as the case may be, and a definite statement that invention of the applicant comprises of an modification or improvement of the invention claimed in the Complete Specification of the main Patent granted or applied for the grant.
Conclusion
The applicant of the application for the grant of Patent is required to file the Specification of Patent in India with the Patent Office. The Specifications can be filed either as Provisional Specification or Complete Specification. The Specification of a Patent should be filed with the utmost care and be such that a common man of skill and knowledge is able to understand and perform the invention of the applicant. The process of filing the Specification of Patent is time-taking and long-lasting. We at Corpbiz have trained experts to guide you with the process of filing of application of Provisional or Complete Specification with the Patent Office in India. Our experts will help and assist you through the whole process of filing of the Specifications and will ensure timely and successful completion of your work.
Read our article:Different Types of Patent Applications in India
