India: Tips To Help You Decide Whether To File A Provisional Patent Application

Last Updated: 5 July 2018
Article by Anmol Pareek

Patent application is an official request filed by the applicant for the grant of a patent or invention done by him, and to obtain the permission the applicant must file an application at a patent office. A patent application can be filed with Indian Patent Office either with provisional specification or with complete specification.1

So as per Section 9 of Indian Patent Act 1970, we can classify two types of patent specifications:

  1. Provisional Patent Specifications
  2. Complete Patent Specifications

PROVISIONAL PATENT SPECIFICATION:

When an invention is done by an inventor and has reached a stage where invention is not complete but it can be disclosed on paper, in that situation, inventor can file a provisional patent application to claim a priority date. This simply means that while the invention is disclosed, the formal claims need not be submitted just yet. A provisional patent application must be followed by complete specification shall be filed within twelve months from the date of filing of the application.2 Moreover, if the complete specification is not filed within the prescribed time, the application shall be deemed to be abandoned. So it is an initial stage, in which a temporary provisional application is filled which only tells about the invention in general and not the complete, descriptive information about the invention. Once the application of the provisional patent is filled then within a time period of twelve months we have to file the complete patent specification.

An Applicant should remember the following things before filling the provisional patent specification:

  1. The applicant or inventor must keep in mind that it is the initial step towards patent registration, it is not the full and fill registration.
  2. It defines the scope of invention done by the inventor, it is the provisional patent specification on which the complete specification will be based upon. So it cannot be treated as the the rough sketch of the complete patent specification.
  3. The applicant must remember the time period of twelve months in which he has to file the complete patent specification, if it is not filed within the prescribed time then it will be deemed to be 'abandoned'.
  4. If there is any new discovery of the elements in the invention during the twelve months between the filling of provisional patent specification and complete patent specification it will not get the earlier priority date. Any addition which is made to the invention after filing the provisional patent application which is outside the ambit of invention, will not be given any advantage.
  5. Confidentiality is maintained even when an applicant not files the complete patent specification within the prescribed time period of twelve months, so that secrecy of the invention is maintained and it is an advantage given to an inventor.
  6. When any Inventor is disclosing his idea, to the attorney for filling the provisional patent application, he may ask them to sign Non-Disclosure Agreement (NDA), so that the confidentiality of the invention can be maintained.

ADVANTAGE OF FILLING A PROVISIONAL PATENT SPECIFICATION:

1) Provisional Patent Specification

When application of the Provisional Patent Specification is filed by the inventor, he is entitled to an earlier filing date. This is important factor as it secures the earlier filing date for the applicant. It will help in the following ways as, if any situation occurs when similar inventions which are filed after the filing date of the provisional cannot become prior art for the applicant's invention. Secondly, if any dispute arises, regarding the ownership of the invention the Patent Office will accept the provisional patent's earlier filing date as the date of filing.

2) Cost Effective

Cost of filling a Provisional Patent Specification is much lower than that of a complete patent application which saves thousands of rupees for the inventor in terms of professional fees, if any dispute arises in regards to the ownership of the invention. Moreover, Provisional Patent Specification can also be prepared by the in inventor himself briefly describing about the invention.

If, precaution is taken while drafting the provisional specification application effectively. So provisional specification application helps the applicant gain time to refine his invention and draft the complete specification, within a time period of twelve months. On the whole, a provisional patent application is a very useful tool for securing a priority date for an invention that is nearing completion and help to solve the future disputes if arise in regards to the ownership of the invention.

Footnotes

[1] Section 9 of Indian Patent Act,1970

[2] Ibid.

Originally published by Global Patent Filing.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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