The Examination Reports, e.g., First Examination Reports (FERs) and Hearing Notices issued by the Indian Patent Office, frequently raise objections on the sufficiency of disclosure requirements. Further, the sufficiency of the disclosure requirement is also a statutory ground for pre-grant opposition (Section 25(1)(g)), post-grant opposition (Section 25(2)(g)), and revocation (Section 64(1)(h)) under the Patents Act
Patents grant exclusive rights to applicants for a limited duration in lieu of the public disclosure of their inventions. The sufficiency requirement ensures that an invention is disclosed in a manner that allows a person skilled in the art to perform it. In particular, the requirement endeavours to warrant that the invention can be understood, replicated, and practically applied by a person skilled in the relevant technical field. This mandate underpins the patent system’s goals of technological progress, equitable competition, and societal benefit while fostering a balanced and efficient patent framework.
In the Indian patent law, the sufficiency of disclosure requirement is codified under Section 10(4) of the Patents Act, 1970, in conjunction with Rule 13 of the Patents Rules, 2003. Specifically, Section 10 (4) of the Act stipulates that every Complete Specification shall:
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection;
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
(d) be accompanied by an abstract to provide technical information on the invention.
The Examination Reports, e.g., First Examination Reports (FERs) and Hearing Notices issued by the Indian Patent Office, frequently raise objections on the sufficiency of disclosure requirements. Further, the sufficiency of the disclosure requirement is also a statutory ground for pre-grant opposition (Section 25(1)(g)), post-grant opposition (Section 25(2)(g)), and revocation (Section 64(1)(h)) under the Patents Act. These provisions empower third parties to contest patents failing to meet the sufficiency standard.
Indian courts have provided guidance and emphasised the sufficiency of disclosure requirements from time to time. The Delhi High Court in Ram Narain Kher vs Ambassador Industries (A.I.R. 1976 Delhi 87), while refusing to grant an interim injunction, acknowledged that insufficiency of disclosure could justify revocation of the patent under section 64(1) of the Act.
In the case of Titan Umreifungstechnik GMBH and Co. KG vs Assistant Controller of Patents and Designs C.A.(COMM.IPD-PAT) 114/2022, the Delhi High Court asserted that the mere absence of working examples does not render a patent application liable for rejection. The Court, while assessing the sufficiency of disclosure, stated that the primary requirement is that the application includes a clear and complete description of the invention, its operation, use and method by which it is performed so that a person skilled in the relevant field can reproduce the invention based on the description in the application. The Court further stated that although working examples can be beneficial in assessing the patentability of an application, they are not strictly necessary. In particular, the Court acknowledged that there is no mandatory requirement to provide working examples for non-chemical related inventions.
The Delhi High Court, in the matter of The Regents of the University of California vs The Controller of Patents C.A.(COMM.IPD-PAT) 481/2022, while dismissing the appeal and upholding the refusal clarified that Section 10 uses the word ‘shall’, which makes it clear that every requirement under Sections 10(4) and 10(5) is mandatory for the complete specification to be valid in India.
The sufficiency of disclosure requirement was most recently brought into sharp focus by the Delhi High Court in the landmark case of Koninklijke Philips N.V. vs Maj (Retd) Sukesh Behl & Ors. [CS(COMM) 423/2016]. The dispute revolved around three interconnected suits relating to Indian Patent No. 218255, held by Philips, pertaining to a “Method of Converting Information Words to a Modulated Signal.” Philips alleged that the defendants had infringed upon this patent. The defendants counterclaimed, challenging the patent’s validity on several grounds, including insufficiency of disclosure.
The defendants argued that the patent specification failed to provide sufficient information for a person skilled in the art to implement the invention. They contended that the claims were overly broad and lacked technical details. The objections regarding the alleged insufficiency of disclosure raised by the defendants pertain to the following aspects:
- Lack of clarity on the modulated signal formation
- Unclear description of the modulator circuit
- Computation of Digital Sum Value not defined
- Ambiguity in Customary Type
- Claim 12 does not explain how a record carrier is “provided” with a modulated signal
- Difference between the Suit Patent and DVD Specifications
- Missing columns in Figures 2B and 2D
The Court, while considering the contentions raised by the defendants, referred to some legal principles, including the decisions of the Supreme Court in Novartis AG vs Union of India (2013) 6 SCC 1 and Bishwanath Prasad Radhey Shyam vs Hindustan Metal Industries (1979) 2 SCC 511 where the Supreme Court emphasised the importance of a clear and complete specification and ruled that a lack of clarity or definiteness in claim scope may render a patent vulnerable to revocation. In this regard, the Court observed that the requirement, as per Section 64(1)(h), is that the complete specification must disclose the invention to enable a person skilled in the art to implement it without undue experimentation. It must also include the best method known to the patentee for carrying out the invention at the time of filing.
The Court further held that the law does not require a patent specification to exhaustively detail well-established scientific principles or routine design choices that a person skilled in the art would naturally infer without undue effort, and a patent cannot be revoked merely on the ground that the language of the specification is imperfect or lacks technical elegance.
The Court meticulously examined the patent specification and the evidence presented by both parties and held that the complete specification sufficiently and clearly describes the invention, including the method of encoding and the structure of the record carrier. The cross-examination of experts confirmed that the patent specification details the coding process sufficiently, allowing manufacturers to adopt and implement the technology. The Court, while rejecting the claim of insufficiency, held that the defendants have failed to show any evidence that a skilled person in the field of optical disc technology would be unable to implement the invention using the provided disclosure and the best method of performing the invention was disclosed to the extent known at the time of filing.
The various judgments from Indian Courts clearly emphasize that the sufficiency of disclosure requirements remains a cornerstone of patent law, safeguarding the interests of both the patentee and the public. The key consideration is whether the disclosure enables a skilled person to put the invention into practice without undue effort. The judiciary’s approach underscores the importance of comprehensive disclosures that facilitate technological advancement while adhering to legal mandates. The Philips case reinforces these principles and is poised to serve as a guiding precedent in future patent disputes, shaping the trajectory of Indian intellectual property law.
Authors: Manisha Singh and Virender Singh
First Published by: LegalEra here