Avoiding Insufficiency of Disclosure in a Patent Application in India

The requirement of completely disclosing the contents of the invention could be considered to be one of the most important requirements for the grant of a patent right, this is because of the very fact that this requirement roots from the basic jurisprudence of Patent Law. That is to say, an inventor is given the right to exclude others from making use of his invention (monopoly) only in lieu of full disclosure of the invention to the Government.

What is the need for sufficiently disclosing the contents of an invention?

Section 10 of the Patents Act, 1970 (as amended in 2005) (“hereinafter as Patents Act”) deals with the complete specification in a patent application, in particular the contents of the complete specification. Section 10(4) (a) of the Patents Act requires that the complete specification “shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed.” Similarly, Section 10 (4) (b) requires that the complete specification “shall disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection.” These two requirement are also known as enablement and best mode requirement.

Therefore, according to Section 10(4) the complete specification of a patent application must be drafted in such as way so that it describes the best mode of the invention known to the inventor at the time of filing of the patent application, and at the same time must also enable a person skilled in the art to carry out the invention without undue experimentation.

What can insufficiency of disclosure in a patent application lead to?

Section 25(1) (g) of the Patents Act allows any person to file a pre-grant opposition against a pending patent application on the ground that “the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed.”

Similarly, Section 25(2) (g) of the Patents Act allows any person interested to file a post-grant opposition against a granted patent (within one year of date of grant) on the ground that “the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed.”

Along with being a valid ground for opposition, insufficiency of disclosure is also a ground for objection by the Patent Controller in the first examination report (FER).

The issue is, whether insufficiency of disclosure could in itself be the sole ground for refusing a patent application.

In Press Metal Corporation Limited vs. Noshir Sorabji Pochkhanawalla and Anr [1982 (2) PTC 259 (Bom)], the Bombay High Court while setting aside the order of the Patent Controller dismissing appellant’s opposition and allowing the respondent/applicant to amend the complete specification, observed that –

“It is the duty of a patentee to state clearly and distinctly the nature and limits of what he claims. If the language used by the patentee is obscure and ambiguous, no patent can be granted and it is immaterial whether the obscurity in the language is due to design or carelessness or want of skill. It is undoubtedly true that the language used in describing an invention would depend upon the class of persons versed in the art and who intend to act upon the specification. In the present case since the invention is described in an obscure and ambiguous language, therefore, the patent is liable to be refused under Section 25(1) (g).”[1]

In a pre-grant opposition matter against patent application no. 87/MUM/2007, the Controller also answered this question in affirmative.

The Patent Controller in the matter of pre-grant opposition against patent application no. 87/MUM/2007 while referring to Press Metal case observed that “according to the ratio decidendi of the case law (Press Metal case) the impugned patent must be rejected in toto solely on the ground that the complete specification does not sufficiently & clearly describe the invention or method by which it is to be performed.”

The Controller in 87/MUM/2007 pre-grant opposition order, while refusing the patent, observed that –

The description in the complete specification is the dictionary to claims, that is to say, if one cannot understand the claims he should refer to the description in the specification. Therefore, the claims when read with the description must be sufficient for a person skilled in the art not only to understand the invention but also to perform the invention.

“Since the disclosure of the invention is the consideration in return for which the applicant is granted a monopoly, the highest degree of good faith is called for, & the disclosure shall be clear, precise, honest & open. A designedly ambiguous description or one that is wanting in distinctness, either by negligence or unskillfulness, will invalidate a patent”[2]

Therefore, even if the invention is novel and inventive, a patent application may be refused solely on the ground that it lacks sufficiency of disclosure, that is to say, it does not enable the person skilled in the art to make use of the invention without undue experimentation, and additionally does not disclose the best method of performing the invention.

Conclusion

The following points should be kept in mind while drafting the complete specification of a patent application for grant of patent in India –

A takeaway from the perusal of the order of the Controller in the matter of pre-grant opposition against Patent Application no. 87/MUM/2007 is that – at least the following points should be kept in mind while drafting the complete specification (CS) for a chemical/pharmaceutical invention in order to avoid the objection of insufficiency of disclosure and, further avoid refusal of the patent application:

  • The CS must at least disclose one example in the description. It is to be noted that even a single example in the CS is sufficient to meet the requirement of Section 10(4) of the Patents Act, however care must be taken whether the ingredients & their different percentage used to make the pharmaceutical dosage form are covered properly or not. The disclosure must be sufficient to enable whole width of the claimed invention to be performed.
  • In case the invention claims certain improvement from the existing art, then the CS must disclose any clinical trial data to prove enhancement in efficacy of the product/process.
  • The CS must disclose the specific conditions required to carry out the process, if any, claimed in the application.
  • In case the invention utilizes some different ingredients, then the CS must disclose their proportion, ratio with other ingredients.
  • In case the invention claims certain novel and advantageous product, then the dimensions (e.g. thickness, etc.), if any, of the same must be disclosed in the CS.
  • Other relevant information, if any, such as time of dissolution, stability data, binding agent, stabilizing agent, and any other test for supporting the claimed subject matter must be disclosed in the CS.

*Disclaimer: This article shall not, in anyway, constitute a legal advise.*

[1] Press Metal Corporation Limited vs. Noshir Sorabji Pochkhanawalla and Anr, 1982 (2) PTC 259 (Bom), para 41 (emphasis added)

[2] British Ore Concentration Syndicate Ltd. vs. Minerals Seperation Ltd, 27 RPC 47; Cincinnati Grinders (Inc) vs. BSA tools Ltd, 48 RPC 33.


Picture from here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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