The Specifications and ITS Many Dilemmas

 

In one my previous blogs I discussed that, even in u/s 10(4)(c) and 10(5) or u/r 13 of Patents, it’s not precisely mentioned how the structure of the Claims should be defined, except the non-mandatory guidelines of WIPO that’s been followed. And if further you read Article 6 of the PCT, it defines that Claims should be precise and concise. But in Rule 6.3 (c) of the Regulations, what exactly it mentions? It states that:

‘where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.’

What does this mean? That this regulation is not mandatory, if I’m not wrong? And if now you match it with the above sections and subsections of the Act further, it gives the guidelines that the Claims should relate to the single invention and should be clear, succinct, and lucid while filing of the specification. Correct? Thus, the non-mandatory implementation of the structure of the claims arise whilst drafting of the claims defining the scope of the invention. But does it anywhere mention independent claim? Besides dependent claim (Rule 6.4, wherein again it includes that -> failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State? Whereas, it illustrates about the dependent claims referring to the single previous claim or several previous claims (and not just one). What does this mean? That there can be single or several independent claims too, whereas dependent claims referring to the single or several previous claims. Correct?

Furthermore, the manner in which claims are being drafted is not mandatory, unless the local law specifies the same, or they’re not in accordance to define the scope of the invention, or objection would be issued under Article 17(2)(b) in the ISR.

Now comes my dilemma:

And as everyone knows that the foundation of your Patent depends on what? Claims and Drawings, and not precisely the Specification when being contended or argued at the time of hearing, or in the pre or post grant opposition or filing the reply to the examination report. No matter how carefully you’ve drafted your Specification, if in case the claims don’t define the scope of the invention clearly, then that specification doesn’t mean anything!

Thus, this dilemma originates, as why the requirement of the Specification is even needed? The ISA goes VIA Claims and Drawings. The local authorities go VIA Claims and Drawings. And so goes for the Convention applications as well.

Even at the pre or post Grant oppositions, your Claims would be either reduced or expanded (mostly reduced), and most of the arguments would not be based on the foundation of the Specification. Even without the pre or post grant oppositions, and if there’s any pre grant hearing happening when the reply to the first or second examination report is not in order, or the objections or prior arts cited still exists; then too, the Claims are either being expanded or reduced (mostly reduced). And the Specification is least argued upon.

Now, when the reply to the examination report would include all the prior arts cited in the examination report itself, so what’s the purpose of adding the background of the invention and the presumed prior arts, in the Specification itself? Do you add the same in case of trademarks? Do you add in case of designs or copyrights? Then what’s the point of adding the self-presumed infringement analysis report in the reply to the examination report? For your own reference that could be done, but why in the Specification needed? And so goes for the drawings, when you’re defining the claims with the help with your drawings itself. Agree?

Thus, my point is, why need the Verbose Complete Specifications? It’s complicated, unnecessary, wastes time in the grant or oppositions of the patents itself.

Think About It! 😊

© Pranav Chaturvedi