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In a recent patent pre-grant opposition matter wherein Khurana and Khurana, Advocates and IP Attorneys (K&K) represented the Opponent, the patent application was refused mainly on grounds of Insufficiency of Disclosure as per Section 25(1)(g) of the Indian Patents Act, 1970 (“Patents Act”). This case re-confirms the role of sufficiency of disclosure or enablement during patentability assessment of a patent application, and that the Learned Controllers may reject patent applications on this ground alone in case the requisite standards are not met.
Sufficiency of disclosure is a basic requirement of a patent system which works on a ‘quid-pro-quo’ basis, i.e., to reward a technical innovator by granting her exclusive rights for a limited time period in exchange for complete public disclosureabout the invention. The Patents Act, under Section 10(4) casts a duty on the applicant to disclose the best mode/ method of practicing the invention known to the Applicant. Furthermore, Insufficiency of disclosure is a ground on which a patent application can be opposed under section 25(1) and 25(2) of Patents Act, as well as forms grounds of revocation of a patent under section 64(1)(h) and 64(1)(i). Nowadays, it is well-established that sufficiency of the disclosure refers to adequacy of pertinent information to be provided in the complete specification to enable an average skilled person in the art to perform the invention[i].
Insufficiency of the description has two branches[ii].
1. The 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 description must be fair i.e. it must not be unnecessarily difficult to follow.
In the instant case, the opponent represented by Khurana and Khurana, Advocates, among other things, contended, that the invention is not adequately described in the application. The Learned Controlled, viewed the application from the point of a person ordinarily skilled in the art, and whether on a reading of the description etc. would that person be able to understand the invention to work on his/her own. The Learned Controller found that certain questions on how the invention works remains answered and therefore, the invention is not sufficiently described, thus sufficiently forming the grounds to refuse the patent application for insufficient disclosure.
It is therefore advised that appropriate caution be taken
while drafting patent applications so as to meet the criteria for enablement.
Not only should all features and units be described, but special care ought to
be taken to describe how they perform their respective functions and interact
with each other leading to the overall inventive concept.
This should be duly supported by examples and diagrams.
[i]Biogen Inc.Vs. MedevaPLC (1997)RPC 1 at Para 53
[ii]Halsbury‘s Law 3rd Edition, Vol.29.page 66, para 138