How to file a Provisional Patent Specification in India

Provisional Patent – Introduction

According to the Indian Patent Act 1970 (Section 9), there are 2 types of patent specifications i.e.

  1. Provisional Patent Specifications
  2. Complete Patent Specifications

A provisional patent specification is an application before filing a complete patent. The provisional patent specifies the invention in a broad manner but not completely. It is the type of document which may be filed before a Complete Specification in the Office of the Controller of Patents pertaining to a prospective patent.

The word “provisional” implies an incomplete and a document before a complete patent specification.  Although it is not mandatory it is recommendable to all the inventors. It has a lot of benefits for the inventor.

Benefits of file a Provisional Patent Specification

Earlier Patent Filing Date

The inventor is entitled to an earlier filing date by filing the Provisional Patent Specification. This is one of the most important features as it secures the priority date for the applicant. The benefits of this are numerous.

  • Similar inventions which are filed after the filing date of the provisional cannot become preliminary art for the applicant’s invention.
  • The Patent Office will accept the provisional patent’s earlier filing date as the date of filing in case if any dispute regarding the ownership of the invention arises.

Cost Effective

  1. The upfront cost of a Provisional Patent application is much lower than the complete patent application
  2. Also, as it is technically more comprehensive as compared to the Complete patent Specification. It does not contain any claims, prior art search and exhaustive and detailed drawings. Because of that, it costs less money and resources to prepare.

Buffer time period to further develop claims based on industry research

You will not know what to claim protection for when your invention is new. There is a time period of 12 months between the provisional patent specification and complete patent specification. You can use this time for:-

  • Researching the invention regarding its value in the market and commercial viability
  • Improving its features and making it technically more advanced

“Patent Applied” tag

The inventor can legally use the tag “Patent Pending” or “Patent Applied” for his or her invention when the Provisional Patent Specification has been filed. This tag increases the credibility of the invention and helps in obtaining funds. Also, it helps in setting up the business model in the background. You can use it as a selling proposition.

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The scope of Abandonment

You can abandon it if the applicant realizes that it is not commercially viable or chooses not to get a patent. Even if he/she has applied for provisional patent specification. But if he had gone for a complete specification, then in abandonment,  he/she would have already spent a lot of money on it. Not only this, the individual may need to face a complication in this case.

Secrecy

The priority date is reserved by maintaining the secrecy because of there no publication of the patent application.

What should an investor keep in mind while filing a Provisional Patent Specification?

Applicant should remember the following things:-

  1. It is not a rough draft of the Complete Patent Specification. On the other hand, it defines the scope of the invention. However, it is the Provisional Patent Specification on which the following Complete patent Specification will be based upon.
  1. It is not the ‘final’ or ‘conclusive’ step towards complete patent. It is the starting step in the procedure towards complete patent registration
  2. If the time period of 12 months within which the applicant has to file Complete Patent Specification is not adhered to then the patent application will be deemed to be ‘abandoned’
  3. Although the confidentiality is maintained after the Provisional Patent Application. But complete and adequate disclosure should be made in the Provisional Patent Application as incomplete applications may arise complications for the applicant in the future.
  4. A rough set of claims should be designed. It helps to conceptualize the invention and understand the implications of the invention completely.

What are the documents required to file a Provisional Patent Specification?

These are the following documents which should be considered for a Provisional Patent Specification:-

  • Form 1

THE PATENTS ACT 1970 (39 of 1970) and The Patents Rules, 2003.:- Application for grant of the patent

  • Form 2

THE PATENTS ACT 1970 (39 of 1970) and The Patents Rules, 2003:- Provisional Specifications

  • Form 5

THE PATENTS ACT 1970 (39 of 1970) andThe Patents Rules, 2003:- Declaration of Inventorship

  •  Form 26

THE PATENTS ACT 1970 (39 of 1970) and The Patents Rules, 2003:- Power of Attorney, If your patent is filed by a Patent Agent then this form is necessary, otherwise not.

  •  E-filing fees

The Patents Rules 1970 (39 of 1970) and The Patents Rules, 2003:- Patent Statutory fee and Electronic Payment

  •  Form 3

The Patents Act 1970 (39 of 1970) and The Patents Rules, 2003:-Corresponding foreign patent application statement and undertakings

  •  Priority Document

This is used for convention applications if the priority date is claimed

  • Illustrations or Drawings of the invention.

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By |2018-10-27T11:00:32+00:00July 20th, 2018|Patent Registration|

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