Lessons for patent drafting
One recurring nightmare (of which there are many) that keeps patent attorneys awake at night, is that of filing a patent specification with pages missing. This is a particular concern at the complete filing stage of the patenting process, where a complete patent specification is prepared, typically based on a priority specification, and which hopefully includes all the good things in the priority specification relating to the invention, plus some additional things that may be appropriate to include as well.
A well drafted priority specification will, as a rule, include a description of the invention, a set of claims outlining the scope of patent protection being sought, and a set of drawings.
Although it is rare, on occasion not all of these things will find their way into the complete specification. There will be page(s) of missing material, which can be a problem.
In this regard, in Australia at least and amongst other things, a complete patent specification is required to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, disclose the best method known to the applicant of performing the invention, and – where it relates to an application for a standard patent – end with claims defining the invention.
It can be difficult to satisfy these requirements if one or more pages of the complete specification, which was intended to be there, is/are not actually filed with the application.
Although this is a nightmarish scenario, in Australia at least there are some options that may be available to potentially remedy the situation and get the missing material added into the complete specification.
These include, requesting an extension of time to file what is missing, filing a declaration from a suitable person skilled in the relevant art, filing a divisional patent application, and seeking to have what is missing included by reference.
Provided that the failure to include the missing material in the complete specification was not intentional, then depending on the circumstances of the failure it may be possible to obtain an extension of time do so, and add the material to the complete specification of the application. In this regard, IP Australia may grant an extension of time for doing a relevant act, such as including the missing material, if the failure to do that act within the required time was because of an error or omission by the person concerned or by his or her agent or attorney, or circumstances beyond the control of the person concerned. When requesting the extension of time, late fees are required to be paid, and a declaration (by a person having knowledge of the pertinent events) outlining the reason(s) the act was not done needs to be filed.
There is no guarantee that the requested extension of time will be allowed, making this a potentially uncertain, complicated, and expensive path to follow.
Depending on what material is missing, filing a declaration from a suitable person skilled in the relevant art may go some way to having the missing material allowed into the complete specification. For example, if one or more pages of the drawings are missing, a declaration filed by a suitable person skilled in the art attesting that, based on their reading of just the part of the complete specification that was filed, they would conceive of the drawings desired to be added, that may be acceptable and any request to amend the specification to add the drawings allowed.
Whilst this could be a less expensive approach, depending on the time required in locating such a suitable PSA, and one likely to be successful, there may be a question regarding the legitimacy of the resulting declaration, if the drawings contain details not present in the description.
The missing material could be included in the specification of a divisional patent application filed from the application. There is a risk in such an approach, however, in that any claims incorporating matter disclosed only in the missing material (and not already in the complete specification) would be provided with the date of filing of the divisional patent application. The priority date of the claims of such an application should not be affected by the inclusion of the missing material provided they continue to be based on the material that was already in the specification.
The final option, and likely the best if available, is to rely on an “incorporation by reference” statement. If this is not already your practice, then we suggest you adopt such a measure. When preparing the complete specification, we recommend including a paragraph along the lines of: “The present application claims priority from [relevant jurisdiction] Patent Application No. [number], the contents of which are incorporated herein by reference in their entirety.”
If the material missing from the complete application was included in the priority application, then you may be able to rely on such a statement to have the complete specification amended to include it, as it was already referenced.
So, there are options to help you resolve such a nightmarish scenario should it arise, depending, as always, on the particular circumstances of the case.