Earlier
1) All Specifications – Provisional or Complete; is to be filed as per Form 2.
2) Upon filing a Division Application under Section 16; the Specification must incorporate specific reference to the number of the original Parent Application.
3) When filing a Patent of Addition under Section 54; Specification must contain:
(i) a specific reference to the number of the main patent, or the application for the main patent
(ii) a clear and definite statement identifying an improvement in, or a modification of the invention claimed in the specification of the main patent which has been granted or has applied for.
4) Detailed diagrams and drawings in the specification provided by the applicant explaining the invention; must conform to the requirements of Rule 15.
While filing a Complete Specification, the diagrams and drawings accompanying the provisional specification can be incorporated as a part of complete specification by the applicant by providing a clear reference to the Provisional specification filed.
5) As directed by the Controller; any Irrelevant or vague information which does not explain the invention must be excluded from title, description, claims, and drawings by the applicant.
6) The applicant has to furnish a declaration as to the inventorship as per Form 5 along with the complete specification before the expiry of one month from the date of filing of complete specification or as per the timeline permitted by Controller on an application made under From 4.
Inventorship Declaration is not required in case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification
Explanation.—For the purposes of this rule, the date of filing of the complete specification with respect to an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.
(7) (a) The abstract of the invention along with the specification as specified under clause (d) of sub-section (4) of section 10, must start with the title of the invention. It must contain a concise summary of the invention contained in the specification.
The summary must clearly enable the invention. It should clearly state : (a) technical field of the invention (b) technical problem to which the invention relates; (c) principal uses of the invention and the solution to the problem which the invention offers to solve
The abstract must not exceed 150 words; it must clearly contain the chemical formula relating to the invention. The applicant must clearly indicate the figures of the diagrams or drawing for reference furnished along with the publication of abstract.
On perusal of the abstract, one must be able to conduct a comprehensive search for the invention in the particular technical field and to make an assessment call regarding the need to have recourse to the specification document.
(8) The Specification must contain a reference to the deposit to be made within 3 months from the date of filing of the application under Section 10(4) (A) (ii).
Total Amendments
The above rule was amended in the year 2005 and 2016.
Present
(1) No change
(2) No change.
(3) No Change
(4) Along with the existing requirement of the diagrams and drawings in the complete specification explaining the invention in accordance with Rule 15; the complete specification now must contain the specific reference of the drawings. Additionally, the features of the invention illustrated in the drawings must be followed by their respective reference signs in the parenthesis in the claims
(5) No Change
(6) No Change
(7) Exclusion
The summary of the invention in the abstract must contain clearly state (a) technical field of the invention (b) technical problem to which the invention relates; (c) principal uses of the invention excluding any speculative use where necessary and the solution to the problem which the invention offers to solve.
In addition, the abstract must also contain the chemical formula identifying the invention.
(8) Proviso Added
If a request for publication under Rule 24A is made to the Controller, such a reference to the application must be made on or before the expiry of the filing date of such a request.
General Understanding
Patents Amendment Rules 2016 enumerate new rules to standardize and to bring in uniformity in the process and practice for the submission of abstract and drawings to facilitate the examination process.
Drawings: Requirement of specific drawings in the complete specification has been laid down with special mention to reference signs in the parenthesis of claim language construction.
Abstract: The text must contain a clear and concise summary of the invention and must specifically incorporate – category of the invention, the nature of technological advancement of the invention compared to existing prior art emphasizing the main use of the invention to the exclusion of any speculative use.
By Tara Gopinath.
