Provisional Patent

A ‘Provisional Patent’ or ‘Provisional Patent Specification’ is a legal document that is filed with the patent office before a complete application for the grant of patent is filed. This application gives a broad description of the invention that the applicant aims to protect.

This article discusses the law relating to provisional patents in India. The process of applying and the documents that are required are also discussed in detail.

Although it is not mandatory to file a provisional patent application, it is advisable because of the various benefits of such an application, which are also mentioned in the article.

Further, the contents of the application and its differences with the complete patent specification have been included.

Glossary

  • Viability- ability to work successfully
  • Feasibility- the state or degree of being easily or conveniently done
  • Frivolous- not having any serious purpose or value.

Introduction

“A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an enabling public disclosure of the invention.”

On the other hand, a provisional patent or provisional patent specification refers to a preliminary application filed with the patent office and it includes a description of the invention. The description provided should include details about how to make and use the invention.

One can submit the provisional patent application even when the invention is not yet complete or final, but can be disclosed on paper.

A provisional patent application is less formal and simpler than the regular patent application. Although one can move directly to the complete patent application, it is advisable to file a provisional patent application first. The main reason for the same is that it helps in establishing an early priority date for the applicant. Another reason for filing a provisional patent specification is that it gives a time window of 12 months to the applicant to decide the viability and feasibility of the product in the market.

If the complete patent application is not filed within 12 months of the filing of the provisional patent specification, then the complete patent application is deemed to have been ‘abandoned’.

Another important point to note here is that any additions made to the invention within the period between the filing of a provisional and complete patent application will not get an early priority date. Thus, the developments in the product made during the 12 months will not get the advantage of getting an early priority date.

Process for filing a Provisional Patent Application

Step 1- Check whether the invention is ‘patentable subject matter’

The first step is to see whether the invention can be patented. This research is not compulsory, but it is advisable. This is because not all inventions are patentable. Section 3 of The Patents Act 1970 mentions the cases which are not inventions under the Act and thus, cannot be granted a patent. It includes the following:

“(a) an invention which is frivolous or which claims anything contrary to well established natural laws;

(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

(c)the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;

(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

(g) Omitted by the Patents (Amendment) Act, 2002

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

(j) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties, and species and essentially biological processes for production or propagation of plants and animals;

(k) a mathematical or business method or a computer programme per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing the game;

(n) a presentation of information;

(o) the topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of a traditionally known component or components.”

Also, according to Section 4 of the Act, “no patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).”

Step 2- Patentability Search

If the invention is not included in Section 3 of the Act, i.e., if it is a patentable subject matter, then the next step would be to carry out a ‘patentability search’ or a ‘prior art search’. This step can be skipped while filing for a provisional specification but has to be done before the complete specification is filed.

To get a patent for the invention, such inventions should fulfill all the patentability criteria. A patentability search means that one needs to find out whether the invention meets these criteria. Thus, for an invention to be eligible to get a patent, it must be:

Novel: Novelty is an important criterion in deciding whether the invention is patentable or not. It means that the invention must be new, i.e., it must not have been heard of before.

According to Section 2(l) of The Patents Act 1970, novelty or new invention means, “any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of the state of the art”

Inventive step or non-obviousness

Non-obviousness of the invention means that it must not be obvious to a person skilled in the same field. Section (ja) of The Patents Act defines ‘inventive step’ as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”

Capable of Industrial application

Section 2(ac) of The Act states that”capable of industrial application concerning an invention means that the invention is capable of being made or used in industry”

This means that the invention must have a practical utility. In other words, the invention must be capable of being applied in the industry to which it relates.

Enabling

This criterion suggests that the information disclosed in the proposed invention should be sufficient to reduce it in to practice. Grant of a patent requires full disclosure of such invention, and the disclosure should be such that any person, who is ordinarily skilled in the art, should be able to reduce the invention into practice by the help of the information disclosed in the patent application.

Step 3- Deciding whether to go for a provisional or complete specification of the product

If the invention meets all the patentability criteria and is also included in the patentable subject matter, the applicant must decide whether to go for a provisional specification or to apply for a complete patent.

If the invention is not yet complete or the applicant is at an early stage of research and development, then he can file a provisional patent specification. In case the applicant has a prototype or experimental results to prove the inventive step, he can file a complete specification.

Step 4- Getting the documents ready

To file a provisional patent specification with the patent office, the applicant needs the following documents:

  1. Form 1 ( Application for grant of patent)
  2. Form 2 (Provisional Specifications)
  3. Form 5 ( Declaration of Inventorship)
  4. Form 26 (Power of Attorney). If the patent application is filed by a Patent Agent then this form is necessary, otherwise not.
  5.  E-filing fees (Patent Statutory fee)
  6.  Form 3 (Corresponding foreign patent application statement and undertakings)
  7.  Priority Document (This is used for convention applications if the priority date is claimed).
  8. Illustrations/Drawings of the invention.

Step 5- Pay the Relevant Fee

The fee for the filing of a provisional patent specification depends on whether the applicant is an individual, start-up, small entity, or others.

Apart from the governmental fee, the applicant also needs to pay the relevant professional fee in case the applicant hires a patent expert.

Contents of a Provisional Patent Specification

1) Title of the invention:

An application for a provisional patent specification begins with a descriptive title of the invention. It should be short and to the point. The word limit prescribed is a maximum of fifteen words. It should not be too vague.

2) Description of the invention:

Before describing the invention, a Preamble to the description is provided. For a provisional specification, the Preamble begins with, “The following specification describes the invention”.

Thereafter, the applicant needs to describe the invention in detail. It should include as much information as the applicant has with him at the time of applying as new details added afterward do not get the advantage of the priority date.

3) Field and background of the invention:

The field to which the invention belongs must also be included in the application. It should be crisp so that it gives a clear idea as to which industry the invention relates to. A brief background on the research and development undertaken is also to be included in the application.

4) Object and statement of the invention:

This section includes the purpose that the applicant seeks to achieve through the invention. It shows the nature of the problem solved and also helps in describing the extent and scope of the invention.

Benefits

·       Priority date:

Filing a provisional patent secures a priority date for the applicant. It means that the applicant is now eligible to have a priority date as the provisional application filing date, although the applicant is not ready with the complete invention or complete patent application yet. This helps the applicant to claim that his invention is the ‘prior art’ in case any disputes arise in the future.

·      Relatively lower cost:

Provisional patent specifications involve lower upfront costs. This saves a lot in terms of professional fees payable. Also, it is not mandatory to conduct a prior art search and does not require ‘claims’ in the application, therefore it costs less money and resources to prepare.

·      Gives time to test the commercial viability of the invention:

There is a time frame of 12 months between the filing of a provisional specification and the final patent application. This window can be used by the applicant to conduct further market research to test the viability of the invention. It gives time to check whether the businesses are willing to license the patented invention. It also gives time to evolve the invention to its full potential.

·      Use of the “Patent Pending” tag:

Once a provisional patent application is made, the applicant can use the “patent pending” or “patent applied” tag. This helps in conveying the intention of the applicant to protect the invention. It also adds to the credibility of the product.

·      Scope of abandonment:

As the applicant has a period of 12 months before filing for a complete patent specification, the time can be utilized for checking the commercial potential of the product. In case the applicant happens to find that the invention is not worth filing complete patent protection for, then it can be abandoned.  

·       Prevents harm in case of breach of confidentiality:

In cases where the applicant shares the information about the invention with others, like manufacturers, partners, or distributors, the possibility of a potential leak can never be completely ruled out. Even after signing ‘Non-Disclosure Agreements’, there are chances that the information might get leaked to unauthorized persons. Therefore, it is advisable to file a provisional patent specification before disclosing any information to third parties. This would ensure that the applicant’s chances of getting a patent are not harmed due to any disclosure.

Difference between Provisional Patent Specification and Complete Patent Specification

  • Stage of the invention: The provisional patent specification can be filed even when the invention is at an early stage of development. Whereas, a complete patent specification is filed only when the invention is complete or mature and there are no further changes to be made. 
  • Protection granted: Once a complete patent specification is approved, the applicant gets all the rights associated with a patent. But, when a provisional specification is filed, the applicant can only use the tag “Patent Pending”.  
  • Costs: A provisional patent specification involves lesser costs as compared to a complete specification. This is because it requires fewer formalities and involves less professional costs. On the other hand, a complete specification requires more time and effort and thus, is more expensive.
  • Scope: A provisional patent specification can be made even with only broad details of the invention, it does not require the applicant to give in-depth details as the invention is still in the developing stage (although it is advised to give as much detail as possible). Whereas, in a complete specification, comprehensive and absolute details of the invention are to be included.
  • Structural difference: As opposed to a complete patent specification that includes all parts of a patent application, a provisional patent specification does not include some contents of such application, like claims and abstract.
  • Requirement: An applicant can skip the provisional patent as it is not mandatory to file. If the invention is ready and a prototype can be presented, one can directly go for a complete patent specification which is mandatory to get a patent.

Conclusion

The filing of a provisional patent specification is not mandatory in India. But, it does provide cost benefits to the applicant in terms of the professional fee payable. Therefore, it is advisable to file a provisional patent application before going for a complete application for grant of patent.

The process for applying is also simple and do-able. Thus, one can file for a provisional patent specification without much difficulty.

References

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