The requirement of disclosure in a patent specification exists across jurisdictions as the quid pro quo for against the monopoly in relation for a limited period of time. However, depending upon jurisdiction, the nature of disclosure requirement varies. We have covered the quantitative distinction between the “enablement” and “best mode” requirements in various jurisdictions under the light of similar Indian requirements in an earlier article. As against that, this article briefly covers the qualitative distinction between the disclosure requirements principally between the US and EP when addressing the “enablement” i.e. to what degree of disclosure is required in order to consider an invention as sufficiently disclosed or enabled, lessons for India.

 

 

Article 29 of the TRIPS Agreement mandates:

 

“Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.”

 

 

Similar to TRIPS, the first Para., Section 112, Title 35 of the US Patent Act, 1952/ United States Code (USC) requires the inventor to adequately describe the three elements in the patent application: (1) a written description of the invention itself; (2) the manner and process of making and using the invention (enablement); and (3) the best mode contemplated for carrying out the invention (best mode). The Patent Reform Act, 2007, stated that the best mode requirement continued to apply to all patents, but it no longer formed the basis for a defense to a charge of patent infringement during enforcement litigation or post-grant review proceedings.

 

 

Regarding this, Article 83, EPC states: “The European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.”, whereas Article 84 requires the claims to be clear and concise, thus, focussing upon the “enablement” requirement.

 

 

35 U.S.C. 112 suggests that a specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Further, in US, Sec. 3.2.1., Part I, Examination Guidelines for Patent and Utility Models requires a patent applicant to describe in detail at least one mode that the applicant considers to be the best among various modes of carrying out the invention, complying with Article 36(4)(i) of Japanese Patent Law, however, due to the difference in “first to file” v/s “first to invent”, Japan refers to “applicant”, whereas USA refers to “inventor”, so does the TRIPS.

 

 

Regarding this, Article 69 EPC states that the scope of protection is determined by the claims, and the description and drawings shall be used to substantiate the claims. The protocol on the Interpretation of Article 69 EPC states that the extent of protection is a position between the strict literal meaning of the wording used in the claims and a position in which the claims are merely used as a guide, thus, there is an effort to ensure fair protection for the patent proprietor and a reasonable degree of legal certainty for third parties, when due account is taken of any element equivalent to an element in the claims of a specification.

 

 

When it comes to practice, EPO demands the exact wordings of the claims in the description; preferably both in the “Summary” as well as in the “Detailed Description” to distinguish the whether the literal meanings of the wordings and/ or phrases are required or not, the latter is when the claims are merely as a guide. As against that, by practice, USPTO demands a written description of the invention, and of the manner and process of making and using it, in full, clear, concise, and exact terms as to enable a skilled person to which it pertains, or with which it is most nearly connected, said “near connection” obviates the demand of a literal disclosure in the line of claims throughout the description.

 

 

As India by and large follows the EP system with certain add on restrictions and associated demands, Section 10 of the Indian Patent Act demands clarity, sufficiency, definitiveness, enablement as well as the best mode requirement, and objection U/S 10 of the Act is common in the prosecution stage, as well as opposition U/S 25(1)(g) and 25(2)(g) respectively. Therefore, while drafting a specification, it is suggested that the drafter should incorporate the exact phrases used in the claims, in the description as well, to prevent any possibility of objections being raised during examination and/ or during opposition under relevant sections.

 

 

Coming to the Indian practice, the disclosure requirement is deliberated U/S 10. Section 10(4) of the Indian Patent Act suggests that: Every complete specification shall-

 

 

The general interpretation of the Indian Patent Office (IPO) regarding “full and particular description of the invention” is that the claims should be clear and succinct, and well supported by the rests of the parts of the complete specification, said “rest of the part” must include the “Detailed Description” and “Summary of Invention”. The summary of invention should comprise the crux of the invention, preferably a concise summary of the claim-set, including a little bit of background as well as highlights of the possible embodiments.

 

 

Regarding the “its operation or use and the method by which it is to be performed”, the general interpretation is that the invention must be exemplified through examples, said examples should be “working examples” and ought not to be “prophetic examples” i.e. only how the invention works should be detailed, substantiated by appropriate data, the data may include tables, diagrams, figures, drawings or the likes; and should never include any possible and/ or tentative way(s) that the invention may work, like that is deliberated in the “Discussion” section of most of the “original peer-reviewed papers”. Regarding this, the USPTO has come up with clear guidelines suggesting that the applicants to draft “working examples” in the past tense, whereas “prophetic examples” should be in the future tense.

 

 

Besides, regarding “the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection”, the IPO basically asks for multiple examples in case a larger range of parameters are claimed or when multiple combinations of a product/ system is possible.

 

 

Although, the Indian Patent law requires the Applicant to mention the best possible way of carrying out the invention in the patent application, the requirement may vary depending on a case to case basis. As “best” is a superlative phrase, i.e. it can be used only when more than two (2) options are referred to, in an invention, therefore, Best Mode provision should not be directed to a scenario where no mode has been disclosed, amounting to Non-Enablement or to a situation where only 1 mode has been disclosed clearly and categorically with an Example, and duly claimed; as best mode requirement may be considered addressed in the absence of any possible comparison between other modes.

 

 

Further, vide Section 10(5) of the Act, it is mandated that “The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.”

 

 

The first part of this section is important as it talks about “Unity of Invention”, a common objection as and when the examiner is of the opinion that multiple inventions are present in a single patent application, that too without a single inventive concept. This objection clears the path to file a divisional application by carving out certain already filed claims from an existing patent application and incorporation of said claims in a daughter application with the same specification disclosure. The applicant, however, reserves the right to defend the objection and establish that a common inventive concept runs through and forms the bedrock for all seeming different inventions.

 

 

The second part demands the claims to be clear and succinct, however, fairly based on the specification disclosure, thus, giving the indication that the specification body including the “Detailed Description” may not have the exactly the same phrases as mentioned in the claims, i.e. the claims may detail the same scope without necessarily copying certain phrase(s), and more importantly, the claims have independent legal standing irrespective of the disclosures in other parts of the specification i.e. if something has been claimed and not mentioned anywhere else in the specification, the doctrine of “fair disclosure” will be satisfied.

 

 

In sum, the interpretation of Section 10 is of utmost importance when it comes to drafting of a specification as well as when a patent application is under prosecution. Care must be taken in order to safeguard the interest of patent applicant(s) and/ or patentee(s) at the initial stage itself in order to deter any adverse consequence(s) from the IPO later on.