Provisional patent application in India


Provisional patent application in India

When you are at a stage in your research and development work where, it can be disclosed on paper but it’s not a final invention, then you can prepare a description of the invention as provisional specification and submit to patent office to secure the priority date of the invention.

It gives following benefits:

  • Secures filing date
  • 12 months of time to file complete specification
  • Low upfront cost

When you complete the required documents and your research work then you can file complete specification.

Filing the provisional specification is an optional step, if you are at the stage where you have complete information about your invention then you can directly go for complete specification.

Important things to remember about provisional patent application:

  • A provisional specification is not a rough draft;
  • it defines the field of invention and also defines the scope of the invention to certain extent.
  • Even if you file complete specification later it does not replace the provisional specification, it still remains in the record.
  • The patent office accords the filing date and patent application number to the provisional specification received.
  • If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned.

How filing provisional application could help?

If we see a typical life cycle of a patent owner, the most preferred way you get your ROI with the patents is by licensing it to other business. The Success in licensing your patent to other business lies in how you talk to decision makers and project the advantages and potential profits by licensing rights for your patented invention. However instead of going for complete patent, you can choose to go with provisional patent application.

Advantages of Provisional patent application 

  • Low upfront cost: you end up paying much less for filing a provisional application than filing a complete patent application.
  • You can write “Patent Pending” status: Although provisional patent is not actually a patent and it will not be converted to complete patent application unless you take further steps… You legally can write “Patent Pending” for your invention. (product prototype) up on filing provisional patent you have secured the priority date as its filing date, so you need not worry about confidentiality.
  • Time to let invention Evolve: Filing a complete patent application at very early stage of the invention could be a mistake and it may not protect your invention adequately, so filing provisional application secures your priority date and gives you enough time to work on your invention to the fullest possible potential.
  • Time to test the commercial potential: Having secured the priority date by filing a provisional application, you can test few things like:
    •  Willingness of other businesses to license your invention then patented
    • Get an understanding about commercial worth of invention
    • Time to conduct market research and test commercial potential
    • In effect you get full 12 months of time to decide whether to move ahead with complete patent application or not, as during this period you can do extensive market research and find the commercial worth of your invention without worrying about its confidentiality.
  • abandon the provisional patent application: (saves you money) In case you happened to find out that the invention for which you already have filed provisional patent application is not worth going ahead for full patent protections for some reasons like:
    • The invention is not worth that much commercially
    • No one willing to buy, license it neither you willing to produce the invention, etc.
      You actually save thousands of rupees, you otherwise would have spent on directly going for complete patent application, and if at all decided to abandon it in between for some reasons.
  • Becomes granted Patent: (by following procedure) the provisional patent can become granted patent if the complete patent application is filled within 12 months from filing date of provisional patent and entire patent procedure is followed till grant of patent. (Provided the patent application is not rejected by the controller)

Now, the granted patent will have the benefit of earlier priority date (that is filing date of provisional patent) as priority date is crucially important in all stages of patent life cycle, right from examination stage to grant of patent and even in litigations stage and even while monetizing patent.

 Mistakes to avoid in Provisional Application 

Be careful when writing provisional application for your invention.

  • It is a scope defining document: A provisional application is not a rough draft of your idea or invention. In fact it defines the scope of your invention. So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing complete patent application) will fail to have the earlier priority date (filing date of provisional application). Which means the part of invention you developed after filing provisional which is outside the scope which is set by provisional application will not have the advantage of priority date of provisional application.
  • Even if you file complete specification later it does not replace the provisional specification, it still remains in the record. The patent office allocates the filing date and patent application number to the provisional application received.
  • If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned.
  • Another mistake would be failing to disclose the scope of invention.
  • The description of invention should not be limiting: The language used in patent application plays an important role in defining its scope: While writing description for invention, you should avoid using limiting words like “must have” “consists” “essential” Instead try to describe elements of the invention with as broad scope as possible: You can use terms like a “writing device” instead of directly saying “a pen” which would be of limiting scope and can eliminate other writing devices like pencil from the scope.
  • publically disclosing parts of invention that are not protected by provisional specification. This would destroy the novelty of the part of invention which is not covered in provisional specification

Contents of Provisional Specification

  • Title of the invention
  • Description of the invention starts with preamble ‘The following Specification describes the invention
  • The description contains
  • The field of invention and containing the background of the invention
  • Object of the invention and statement of the invention
  • Claims may not be part of the Provisional Specification

So, in a way provisional patent application is a way to save costs while protecting your innovative idea meanwhile. If you utilize it in certain way, it is indeed a low upfront cost option that give you time to test the true potential of the invention before actually going for full patent procedure. additionally your priority date is secured and the confidentiality is taken care.

 

About 

Registered Patent Agent India (IN/PA 2352) with bachelors degree in electronics and telecommunication engineering. Working in patents and IPR field since 12+ years. associated with leading Intellectual Property firms in India Successfully helping inventors and businesses in securing their Intellectual Property Rights (IPR) including Patents, Trademarks, Designs & Copyrights along with Contract & Commercial Matters.