Does a provisional patent application need to be filed?
The Indian Patents Act, 1970 governs provisional patent applications in India. A patent grants the owner of an invention with industrial utility exclusive proprietary rights. The inventor is the only one who can monetise the invention after obtaining a patent. The Patent Act of 1970 provides several guidelines to assist inventors and patent professionals in acquiring a patent.
You should first become familiar with the patent specification documents in order to obtain a patent. Patent specifications are technically complex. The patent specification serves two purposes. Developing an invention should be the first step which should be made public in order that it can be developed and worked on once it is in the public domain after the patent expires. This might then allow you to reuse the invention after it is in the public domain. Second, it is very important to identify the parts of the invention that are the exclusive property of the inventor.
During the patent drafting process, inventors or patent professionals such as patent agents or lawyers compare their invention against existing technology. During the patent application process, this step is taken to ensure that the invention being patented is new and if it would infringe on any existing patents. Upon drafting the specifications, the whole process of writing them will begin. In establishing a patent’s priority date, the provisional specification is by far the most important specification. As its name implies, a provisional specification gives an overview of the invention without delving too deeply into its details. It is a requirement that the complete specification be filed within one year of the date upon which the provisional specification was filed.
The disclosure of the invention, as well as the claims asserting the inventor’s exclusive right to the invention, constitutes the most important document. It is possible to file the completed specification directly, without first filing a provisional specification, if there is an exception to this rule. When this is the case, why is it often recommended by experienced professionals to submit the provisional specification before the complete specification is ready? Answering this question requires a detailed analysis of the significance of a provisional patent application.
Why are provisional patent applications filed when it’s not mandatory?
An inventor may file a provisional patent application in order to protect their invention prior to submitting a complete specification of the invention. An invention must be described in great detail in order be able to draft a complete specification. It usually takes several months for the R&D (Research and Development) process to be completed for most inventions. When one waits until one has completely figured out an invention before filing a complete set of specifications, it may be exceedingly difficult to get a priority date.
By filing the provisional specification with the preliminary details of his/her invention, the inventor could attain a priority date. As well as not requiring claims and diagrams, provisional patent applications are also cheaper to file. Once the provisional patent application is filed, the inventor has 12 full months to refine the invention, determine the claims, and then file the complete specification. Inventors benefit from provisional specifications in this regard, as they provide interim protection, so they have more time to develop their inventions.
Once a provisional patent application has been filed, inventors can market their products with the label “Patent Pending“. After that he will inform the public and potential competitors that he will continue working on it in order to obtain a patent.
Pros of a Provisional Patent:
Filing a provisional patent allows the inventor to work on the invention, search for funding to market the invention, and hire a patent agent to take care of the specification. The filing fee for a provisional patent application is less than that of a complete specification.
ii) Provisional Patent:
Patent protection is granted for 12 months from the date of filing the provisional specification, even before the complete specification discloses the entire invention.
The inventor would not be eligible for interim protection without a provisional patent application.
iii) Patent Priority:
It’s a race against the clock when applying for a patent. When two similar patent applications are filed, it is common for the patent to be granted to the application filed first. A provisional specification should be filed as soon as the inventor has a breakthrough idea to ensure the priority date is placed as soon as possible. The inventor also has the option of taking months to prepare a complete specification of the invention, and then submitting it directly to the corresponding office, thereby pushing the priority date much later.
iv) Patent Pending:
If a provisional patent application is filed, the inventor can market his product with the label “patent pending.”. In other words, this is the equivalent of claiming the product will soon be patented and that no one else will be able to copy it.
v) Foreign Grant Priority:
Provisional specifications can be filed simultaneously in other countries that are members of the Convention, with a similar priority date. An agreement recognises the priority of patents among the countries that have signed the Paris Convention.
As long as an invention is still in development, provisional patents can be an effective way to gain protection. A provisional specification filing is not mandatory, however. The business goals play an important role in the filing of a provisional specification. By filing a provisional patent application, you have nothing to lose, but a lot to gain.