Saturday, November 12, 2011

Provisional and Complete Specifications- "Fair Disclosure" and Priority Dates

Last evening, a regular reader and well-wisher of the blog, Ms.Anita Kalia, asked me to write a post on internal consistency in Section 11 of the Patents Act. I thank her for giving me something to think and write about.

Before I proceed to discuss Section 11 specifically, I ought to spend some time on provisional and complete specifications. Section 10 of the Act spells out the contents of specifications, both provisional and complete.

Following are contents which are common to provisional and complete specifications under Section 10:
1. Title of the Invention
2. Description of the Invention
3. Drawings, mandatory if the Controller of patents directs

Claims need not and typically do not form part of the provisional specification, but does the Act say that claims cannot form part of the provisional? No.

Under Section 10(4), claims must form part of the complete spec., but they may form part of the provisional. Existence of claims in provisional spec. does not automatically make it a complete spec., if the applicant wishes to file and treat it as provisional.

The question is, do claims filed in a provisional spec. have priority dates? Section 11 of the Act, which deals with priority dates, makes it amply clear that there shall be a priority date for each claim in a complete specification.

Therefore, the concept of priority of claims is to be primarily associated with complete specification, and not provisional. It would be obvious to state that priority date, in a way, is legal fiction which antedates the claim to matter disclosed earlier in the provisional spec. 

Be that as it may, the term “priority date” is not to be used in connection with claims drawn in the provisional spec. The claims drawn in a provisional spec. are given priority dates, only when they again form part of the complete spec.- this is the effect of Section 11(1).

How do we simplify the gist of Section 11? The common sentiment that runs along the sub-sections of Section 11 is the extent of disclosure of claimed subject-matter in the provisional spec. This is evident from sub-section(2) which refers to a “claim (that) is fairly based on matter disclosed” in provisional spec.

Sub-section(3) of Section 11 refers to a situation where a single complete specification is filed pursuant to more than one provisional specifications. Here, there are two situations that the sub-section speaks of:

A. Sub-clause(a) of this sub-section speaks of a situation where the subject-matter of a claim in the complete specification is fairly disclosed in one of the provisional specifications. In this case, the priority date of the claim is the date of filing of the provisional specification in which the claim is fairly disclosed.

B. Sub-clause (b) of this sub-section refers to a situation where the subject-matter of a claim in the complete specification is partly disclosed in both the provisional specifications. This means, the subject-matter is not fairly disclosed in a single provisional specification. Since “fair disclosure” is the litmus test, the provision deems the subject-matter to be “fairly disclosed” only in the later filed provisional specification. This is why the priority date of such claim is the date of filing of the later filed provisional specification.

Now let’s jump to Sub-Section(5) which appears to be (only appears, but is not) at loggerheads with sub-section (3)(b). Sub-section(5) reads as follows:

Where, under the foregoing provisions of this section, any claim of a complete specification would, but for the provisions of this sub-section, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

To me, there is no inconsistency or confusion between sub-section (3)(b) and (5). According to sub-section(5), if the complete specification has two priority dates (although strictly speaking it cannot), it means the subject-matter of the claims have been fairly disclosed in two provisional specifications. In such a situation, the priority date is the earliest priority date.

Simply put, sub-section 3(b) presumes that the subject-matter has not been fairly and intelligibly disclosed until the second provisional specification is filed, where the subject-matter attains completion.

On the other hand, sub-section (5) addresses a different situation i.e. the subject-matter is fairly disclosed in both provisional specifications, and therefore it must receive the benefit of priority of the earlier filed specification.

This is why I said that priority dates are integrally connected to the concept of “fair disclosure” of subject-matter.

Opinions and corrections are welcome!

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