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subject matter disclosed in provisional

INDIAN PATENT AGENT

If the subject matter is not disclosed in provisional specification for example any reagent used in a process. 

Is it possible to claim the reagent in the complete specification? Please clarify.

 
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Section 10 of the Patent Act provides that complete specification must describe the best method of performing the invention known to the applicant, including that, which he may have acquired during the period of provisional protection prior to the date of filing the complete specification.In the light of above provision,claiming the reagent,catalyst or moderator is allowed for a chemical equation which has been disclosed in the provision specification.

 
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INDIAN PATENT AGENT

Thank you.

 
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Freelance

Navya, your questions always interests me because they are very practical! My few impressions are below.

 

Whether you can claim that reagent or not depends upon how your provisional specification was written. If you have drafted your provisional application in such a manner that this reagent can reasonably be foreseen to be a part of it, then yes. If your provisional has any kinds of limitations with respect to this category of reagent, then the chances are less. Your complete specification must fairly be based upon your provisional specification. Another important aspect is conception of invention. If you have conceived your invention to encompass this reagent as on your provisional filing, even if you have not explicitly mentioned this reagent in your prov spec, then you can claim it in your complete spec. For example, if this reagent is a functional equivalent of your other reagents.

 

If your provisional is in any way limiting to include this reagent, and this reagent form part of single inventive concept, then what I suggest is file another provisional with this reagent. Request post dating of your earlier provisional application as per the provisions of Sec 9. You can post date your application for a period up to 6 months, subject to the satisfaction of the Controller. But there is a caveat, you will lose 6 months of priority.

 

Study your provisional closely and take a decision accordingly. This does not constitute any legal advice.

 
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Freelance

Navya, forgot to add in my previous message that file a single complete spec for both the provisionals. This would be obvious if one knows the contents of Sec 9, but someone who doesn't know would find the above suggestion weird. I felt that I should clarify.

 
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INDIAN PATENT AGENT

Thank q

 
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