A guide to filing a provisional patent specification in India

A guide to filing a provisional patent specification in India

Legal & Compliance

Vakilsearch Staff

Vakilsearch Staff

29 Nov 2019, 10:00 — 7 min read

Background: A provisional patent specification is a preliminary application before filing a usual patent. In their previous article, Vakilsearch shared an overview of how to file a patent in India. Here they explain regarding filing of provisional patent specification.

First, let us understand the main idea of what is a provisional patent specification.

As per Section 9 of the Indian patent act 1970, there are two kinds of patent specifications,

  1. Provisional patent specifications
  2. Complete patent specifications (non-provisional according to USPTO)

A provisional patent specification is the preliminary application before filing a usual patent. It describes the invention in a broad perspective but not completely. It is the document which may be filed before a complete patent specification in the office of the controller of patents pertaining to an outlook patent.

It receives the word “provisional” from being incomplete and a predecessor of a complete specification which comes afterwards. Even though it is not compulsory, it is mainly suggested as it has a lot of advantages for the inventor.

Also read: 10 things entrepreneurs should know about patents

 

Importance of filing a provisional patent specification

Prior patent filing date: After the filing of the provisional patent specification the inventor is entitled to an earlier filing date. It secures the priority date and has more advantages such as:

  • Alike inventions which are filed after the filing date of the provisional will not get priority before the applicant’s invention.
  • If any dispute occurs regarding ownership of the invention, the patent office will take into consideration the provisional patent’s earlier filing date as the date of filing.

Cost-efficient: The initial cost of a provisional patent specification is comparatively lower than that of a complete patent application which saves a lot of money for the inventor with regard to professional fees.

Moreover, it is technically clear as compared to the complete specification, inexpensive and lesser resources are required to prepare it. A provisional patent specification can also be prepared by the inventor himself/herself.

Time period: As a precaution, it is essential to have enough time to develop claims in the research industry. When a new invention is created, you are unaware of what basis to claim protection for it. However, there is a processing period of twelve months between the provisional patent specification and complete patent specification. This in-between time can be used for:

  • Researching and analysing the value of the invention in the market and its commercial viability.
  • Advancing its features and making it a more viable product for the market.

Pending patentAfter the provisional patent specification has been filed the inventor can officially and legally use the “patent pending” or “patent applied” tag for their invention. This tag will further be helpful in receiving funds as the authenticity of the invention rises while the main business model is being advanced. It can be used as a great selling point.

Scope of abandonment: If an inventor goes for a provisional specification and at some point decides that the product created is not commercially viable and chooses not to get a patent, then it can be easily abandoned. Though in a similar situation, if a complete specification would have been done that would have been extremely costly and lots of money would have already been spent on that process.

Secrecy: Since there is no publication of the patent application, the priority data can be maintained by secrecy.

Key points to know while filing a provisional patent specification

As an applicant, the below-mentioned key points should be taken into consideration:

  • The complete patent specification is an official and legal document. It defines the scope of the invention and it is the provisional patent specification upon which the following complete specification and most importantly, the grant of the Patent will be based.
  • If any elements are created from the time duration of 12 months between the provisional patent specification and complete patent specification filing shall not be given a priority date.  Any new invention after the filing process of the provisional patent specification will not be considered and shall not get the benefit of the provisional application.
  • This step to filing the provisional patent specification should be considered as the initial and first step towards the patent registration.
  • If the patent specification is not filed within the time duration of 12 months, then the patent application will be ‘abandoned’.
  • Confidentiality will be maintained after the provisional patent application but it is equally essential for important disclosures to be made since incomplete applications will be disadvantageous for the applicant in the future processes.
  • In order to conceptualize the invention and comprehend the implications of the inventions fully; it is important to prepare a rough set of claims even though it may not be a part of the provisional patent application.

Required documentation

The below-mentioned documents are required:

  1. Form 1 (application for grant of the patent), the patents act 1970 and the patent rules, 2003.
  2. Form 2 (provisional specifications)
  3. Form 5 (declaration of inventorship)
  4. Form 26 (power of attorney) (required if your form is filed by an agent)
  5. E-filing fees (patent statutory fee)
  6. Form 3 (corresponding foreign patent application statement and undertakings)
  7. Priority document (for convention applications if the priority date is claimed)
  8. Illustrations/diagrams of the invention


Also read: Patents: Advantages & obstructions


Image source: shutterstock.com

 

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Disclaimer: The views and opinions expressed in this article are those of the author and do not necessarily reflect the views, official policy or position of GlobalLinker.

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