Is Filing A Provisional Patent Application A Smart Decision?

Patent protection provides a competitive edge to the companies or inventors in today’s era by defining a legal boundary around their invention in the form of a patent application. Filing a patent application before disclosing the invention not only safeguards the invention for a term of 20 years but also promotes the research and development of the companies or inventors. Therefore, it is advisable to design and follow a strategic patenting system which should be simultaneously aligned and monitored with their research and developments in a particular technical field. However, it is beneficial to consult patent experts such as patent attorneys or registered patent agents before launching or exposing your invention to the world.

The patent system in most of the countries follows “first to file” doctrine, i.e. whosoever files the patent application for an invention first is eligible for the grant of patent for that invention. Under the Indian laws, every patent application needs to be filed before the Indian Patent Office (IPO) and it must be accompanied with either a provisional specification or complete specification. The Patents Act, 1970 read with the Patents Rules, 2003, prescribe the Indian Patent laws related to patents. As per Section 9 of Indian Patents Act 1970, two types of patent specifications that can be filed in India are: Provisional Patent Specification and Complete Patent Specification. In case, the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional patent specification. But it is important to note that there are no further extensions available to file complete specification after expiry of the said 12-month-period. There are some instances where post-dating of an application is often misunderstood as extension of time for filing the complete patent application in India. We strictly advise our clients to avoid such risk as failure to file a complete application within the said timeframe may lead to abandonment of the patent application.

A provisional patent specification is a preliminary application that can be filed before filing a complete specification. It is not necessary to file an application with provisional specification, therefore one can file application directly with complete specification. Generally, filing a provisional patent specification is recommended when an invention is not complete, and the applicant wishes to secure a priority date or first filing date by which the Applicant is allowed to use the word “patent pending”. Some of the benefits of filing a provisional patent application are summarised below:

  • Helps in establishing a priority date or first filing date
  • Gives additional 12-month time period to complete the invention
  • Inventors may conduct further research and development on the invention
  • Gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing the complete specification
  • Raising funds or other grants for the invention
  • Finding interested parties for licensing or assignment

Filing a provisional patent application is less expensive than filing a complete specification since there are fewer formal requirements and a brief overview of the invention may suffice the requirements of the provisional application. Importantly, there is no such requirement of having claims in the provisional application. Thus, drafting of provisional application is a simple and secure option for the applicant if he wishes to save time and money.

Another substantial benefit of filing provisional patent application is that the confidentiality of the invention is maintained. The provisional patent application is neither published nor examined by the Patent Office unless the complete specification is filed within the 12-month period from the date of filing provisional application. The provisional application gets published along with the complete specification after the expiry of 18 months from the priority date or date of filing the patent application.

When To File A Provisional Patent Application

The Applicant may consider filing provisional patent applications under the following circumstances:

  • Concern over competitors applying for similar patents
  • Inventor/applicant cannot afford to file a complete patent specification
  • Product/process is under research and development
  • There may be either an inadvertent publication or oral disclosure of the invention by the inventor or by others
  • Upcoming trade show/exhibition
  • Upcoming product launch
  • Upcoming meeting with potential buyers, investors, customers, vendors, etc.

Under such scenarios, it is recommended to proceed with filing of a provisional application. However, a well drafted provisional specification should adequately define the invention, scope of the invention, and cover major aspects of the invention similar to a complete specification.

Possible Risks Of Filing Provisional Patent Application

Apart from benefits, there are certain possible risks or pitfalls of filing a provisional patent application such as:

  • The provisional application automatically gets abandoned if a complete application is not filed within 12-month time period and no further extensions are available under the Indian Patent Law. Therefore, the inventor has the option of either filing a complete specification or abandon his application.
  • Patent Office does not examine the patent application on its own. It is mandatory to file a complete application which gets examined. Therefore, filing a provisional application may delay the examination process of a patent application.
  • Another significant consideration while filing a provisional application is that the inventor might leave out certain details that are needed to be mentioned in a subsequent complete patent application. In order to claim benefit of the earlier filing date, the features claimed in the later application must be described in the provisional patent specification, either explicitly or implicitly thus scope of the provisional application plays an important role.
  • Although filing a provisional application allows the employees of a company or inventors to disclose the invention publicly but if there is any disclosure of the matter which is not covered in the provisional application then it could damage the overall protection of the invention.
  • A provisional patent application may allow an applicant to secure an earlier filing date, defer costs and provide time which can be utilized by the applicants to refine their invention. However, an incomplete or improperly drafted provisional patent specification may affect the later filed complete application, defeating the ability to obtain valid patent rights.

Filing a complete after provisional application is beneficial but crucial as it requires minimal efforts in redrafting and reviewing of the later filed application, provided that there are no substantial changes in the subject matter of the invention. Therefore, a smart decision of when to file a provisional patent specification and what to file as a provisional patent specification should be thoroughly considered, and ideally made with the same level of diligence as a complete patent application but in consultation with patent experts.

Case Study

Sagacious IP has a premium team of 80+ technical experts, including registered patent agents and patent attorneys for patent drafting. One of our Fortune 500 client came to us with a unique problem – a new product was invented and about to be launched in a week and not even a single patent application for that product was prepared or filed. Our team quickly coordinated with the client and discussed about the product with the inventors. The technical and legal expertise of our patent experts made it easy to get up to speed on the complexities of this unique technology and devise a patent strategy with a clear understanding of the client’s objectives. Usually, it takes two to three months to write one patent application starting from preparing an initial draft, getting it reviewed by inventors and incorporating the revisions or changes. Our team tenaciously worked to complete three provisional applications in less than one week. All three applications were turned into granted patents and since that time, various foreign patent applications have also been filed. The product was launched on the schedule date and it got fully protected under the IP laws. Learn more about our Patent Drafting Support Service here.

-Richa Chaudhary (IPDFP) and The Editorial Team

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