Essay on ‘specification’of patent. (Section 12, 16, 18) | Indian Patent Act

(i) The result of investigations made under section 13; and

(ii) Any other matter which may be prescribed.

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The examiner to whom the application and the specification relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.

The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification has been anticipated by publication before the date of filing of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912; is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete fiction, being a specification filed in pursuance of an application for made in India and dated before or claiming the priority date ‘Serthan that date.

The examiner shall, in addition, make such investigation as they may direct for the purpose of ascertaining whether the invention, as claimed in any claim of the complete specification, has been “liquidated by publication in India or elsewhere in any document other those mentioned in sub-section (1) before the date filing of complete specification.

Where a complete specification is amended under the provisions (his Act before the grant of patent, the amended specification shall be mined and investigated in like manner as the original specification.

The examination and investigations required under section 12 and action 13 shall not be deemed in any way to warrant the validity of any anent, and no liability shall be incurred by the Central Government or any flier thereof by reason of, or in connection with, any such examination or instigation or any report or other proceedings consequent thereon.

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not with the requirements of this Act or of any rules made there under, the Controller may refuse the application or may require the application, pacification or the other documents, as the case may be, to be amended his satisfaction before he proceeds with the application and refuse the application on failure to do so.

Section 16 provides that a person who has made an application 3ra patent under this Act may, at any time before the grant of the patent, he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification slate to more than one invention, file a further application in respect of an Mention disclosed in the provisional or complete specification already ted in respect of the first mentioned application.

The further application under sub-section (1) shall be accompanied /a complete specification, but such complete specification shall not elude any matter not in substance disclosed in the complete Pacification filed in pursuance of the first mentioned application.

The Controller may require such amendment of the complete Pacification filed in pursuance of either the original or the further application s may be necessary to ensure that neither of the said complete Pacifications includes a claim for any matter claimed in the other.

Explanation under this section provides that for the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.”.

Section 17 provides that subject to the provisions of section 9, a! any time after filing of an application and before the grant of patent under this Act, the Controller may, at the request of the applicant made in the prescribed manner, direct that the application shall be post-dated to such date as may be specified in the request, and proceed with the application accordingly: provided that ho application shall be post-dated to a date later than six months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made.

Where an application or specification (including drawings) is required to be amended under clause (b) of sub-section (1) of section 15, the application or specification shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification is returned to the applicant, on the date on which it is re-filed after complying with the requirement.

Section 18 provides that where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated in the manner referred to in clause (a) of sub-section (1) or sub-section (2) of section 13, he may refuse to the application unless the applicant shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or amends his complete specification to the satisfaction of the Controller.

If it appears to the Controller that the invention is claimed in a claim of any other complete specification referred to in clause (b) of sub-section (1) of section 13, he may, subject to the provisions hereinafter contained direct that a reference to that other specification shall be inserted by wall of notice to the public in the applicant’s complete specification unless within such time as may be prescribed, the applicant shows to satisfaction of the Controller that the priority date of his claim is not than the priority date of the claim of the said other specification; or the) complete specification is amended to the satisfaction of the Controller.

If it appears to the Controller, as a result of an investigation under section 13 or otherwise, that the invention so far as in any of the applicant’s complete specification has been claimed in any other complete specification referred to in clause (a) of sub-section (1) of section 13; and that such other complete specification was published on or after the priority date of the applicant’s claim, then, unless it is shown to the satisfaction of the Controller that the priority date of the applicant’s claim is not later than the priority date of the claim of that specification, the provisions of sub-section (2) shall apply thereto in the same manner as they apply to a specification published on or after the date of filing of the applicant’s complete specification.

An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.

If at the expiration of the period, an appeal to the Appellate Board is pending in respect of the application for the patent for the main invention; or in the case of an application for a patent of addition, an appeal to the Appellate Board is pending in respect of either that application or the application for the main invention, the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the period as prescribed under sub­section (1), be extended until such date as the Appellate Board may determine.

If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine

Provided that if an appeal has been filed during the said further period, and the Appellate Board has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court.”.

An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the display of the invention with the consent of the true and first inventor or a person deriving title from him at an industrial or other exhibition to which the provisions of this section have been extended by the Central Government by notification in the Official Gazette, or the use thereof with his consent for the purpose of such an exhibition in the place where it is held; or the publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid; or the use of the invention, after it has been displayed or used at any such exhibition as aforesaid and during the period of the exhibition, by any person without the consent of the true and first inventor or a person deriving title from him or the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society, if the application for the patent is made by the true and first inventor or a person deriving title from him not later than twelve months after the opening of the exhibition or the reading or publication of the paper, as the case may be.

An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that at any time within one year before the priority date of the relevant claim of the specification, the invention was publicly worked in India by the patentee or applicant for the patent or any person from whom he derives title; or by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title, if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public.

Notwithstanding anything contained in this Act, the Controller shall not refuse or to grant a patent and a patent shall not be revoked or invalidated by reason only of any circumstances which, by virtue of section 29 or section 30 or section 31 or section 32, do not constitute an anticipation of the invention claimed in the specification.