Provisional and Complete Specifications

1A patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention, by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. (Catnic Components Ltd v Hill & Smith Ltd [1981] FSR 60, (1982) RPC 183, pp 242-243.) The Patents Act requires that every application, other than an international application, shall be accompanied by a provisional or a complete specification. (Patents Act 1970, s 7(4).) The UK Patents Act 1977 has abolished the filing of provisional specification which existed under the UK Patents Act 1949. (Asahi Kasei Kogyo KK's Application (1991) RPC 485, p 515 (HL).)

2Provisional specification helps in the determination of priority of patents. The object of filing a provisional specification is more manifest in cases where there are similar inventions which give rise to competing applications. Where two or more persons develop similar concepts and make competing applications for patents for the same invention, in different parts of the world, the priority of the co-pending applications is determined on a 'first-to-file' basis. The application which is filed first in time before the appropriate scrutinising authority will be accorded precedence over the later application. This may be so even if an incomplete specification is filed in place of a complete specification. (Ibid, p 524.) The provisional specification should describe the true nature of the invention, and such description should be the same as that claimed in the complete specification. (Nuttall v Hargreaves [1892] 1 Ch 23.)

3Where only a provisional specification is filed at the first instance along with the application, the complete specification shall be filed within 12 months from the date of filing of the application. Section 9(1) of the Patents Act 1970 before the 2005 amendment allowed for extension of the 12 months to 15 months upon request. The 12-month time period granted for filing the complete specification after the provisional specification has been filed allows the applicant to develop, improve and perfect the invention. (See Glaxo Group Limited's Application [1968] FSR 503 (Pat App Tr).) In Glaxo Group Limited's Application, an issue arose as to whether a claim to a process of reacting a steroid, of a certain general formula in which a number of radicals were identified, with a phosphoric acid compound under specified conditions was fairly based on a provisional specification which referred to the reaction, but described the group of steroids in general terms. It was held by the hearing officer that the monopoly sought by the claim to the general formula with identified radicals was more restricted in its scope than the invention set out in general terms in the provisional specification, and the claim ought therefore to be allowed the priority date of the provisional. An appeal was preferred to the Patents Appeal Tribunal. Dismissing the appeal, it was held that the provisional specification expressed the invention in terms of general applicability to a specified series of steroids, and that the claim to specific members of the series confirmed the general applicability of the invention and conformed with the expression of the invention in the provisional specification.

4The applicant may eventually decide to abandon the application if the results are not promising. However, if the applicant intends to pursue the application, it may file a complete specification within the stipulated time. The time period between the filing of the provisional and complete specifications also helps the applicant to maintain the priority date and file international applications.

5The Patents Act does not define or distinguish the two kinds of specifications. In fact, it stipulates certain common requirements for both provisional and complete specification. (Patents Act 1970, s 10 (1) and (2); Patents Rules 2003, r 13(1), Form 2.) But a reading of the Patents Act and the Patents Rules indicates that the provisional specification is a temporary specification which is filed in lieu of, and eventually to be followed up by, a complete specification. The Controller may also direct a specification to be treated as a provisional specification. (Ibid, s 9(3).) The complete specification can accommodate improvements made in the invention, which are not mentioned in the provisional specification. A complete specification filed after a provisional specification may include claims in respect of developments and additions made to the invention as described in the provisional specification, if such developments and additions are of such nature that they would entitle the applicant to make a separate application for a patent under s 6. (Ibid, s 10(7).) A provisional specification need not end with the claims. (See Form 2 which states that the requirement of claim is not applicable for provisional specification.)

6Though both provisional and complete specifications are required to be made in the same form (Form 2), certain distinctions can be seen between the two. A provisional specification needs to satisfy the twin requirements of describing the invention and having a title that sufficiently indicates the subject matter of the invention. (See the Patents Act 1970, s 10(1); and Patents Rules 2003, Form 2.) But a provisional specification need not describe the manner in which the invention is to be performed. (This is a requirement specific to a complete specification. See the Patents Act 1970, s 10(4); Patents Rules 2003, Form 2.) Similarly a provisional specification need not disclose the best method, end with a claim or be accompanied by an abstract as these requirements are specific to a complete specification. (Patents Act 1970, s 10(4).) It is not intended to contain a complete description of the thing so as to enable any workman of ordinary skill to make it, but only to disclose the invention in its rough state until the inventor is able to perfect its details. (Stoner v Todd (1877) 4 Ch D 58.)

7A provisional specification cannot be filed along with a convention and PCT application. The Patents Act requires a complete specification for such applications. (See Patents Act 1970, ch XXII, s 136.) However, the additional requirements of drawings and model, which the Controller may require applies equally for both provisional and complete specification. The Act requires a complete specification to be filed within 12 months from the date of filing the application with a provisional specification, failing which the application shall be deemed to have been abandoned by the applicant. (Ibid, s 9(1).)

8In cases where an application is accompanied by a specification purporting to be a complete specification, the Controller may, upon the request of the applicant made within 12 months of filing the application, treat such specification as a provisional specification and proceed with the application. (See the Patents Act 1970, s 9(3).) This grants the applicant further time to file the complete specification. The 12-month time period was introduced by the Patents (Amendment) Act 2005, before which the applicant was entitled to make a request 'at any time before the acceptance of the specification'.

9An applicant may request for the cancellation of a provisional specification under certain circumstances. A cancellation of provisional specification can be requested where a complete specification is filed following a provisional specification or where a complete specification is filed after the specification purporting to be a complete specification is treated as a provisional specification under sub-s (3) of s 9, and the applicant requests the Controller to post-date the application to the date of filing of such complete specification. Such an action can affect the priority date of the application. (Ibid, s 9(4).)