Select Page

Provisional Patent Application – The Complete Guide

Provisional Patent Application – The Complete Guide

Are you on the verge of making an innovative breakthrough for the creation of a new good or a new Industrial Process? Then this article is essential to you. The inventions are prone to be copied by anybody, anywhere in the word, if the same is not patented. An invention is patentable only if it is new, and there is no prior art (Evidence) relating to the existence of the proposed invention before the date of making the patent application to the Controller General of the Patent. To avoid the risk of any disclosure of the invention, while the invention is still at the stage of R&D, it is strongly advised to File a Patent Application with provisional specification and submit the complete patent specification within the next twelve months.

Provisional Patent Application – The Complete Guide

In terms of section 9 of the Indian Patent Act, 1970, a patent application can be filed with a provisional specification to secure the novelty of the invention, the immediate advantage of a provisional specification is that the invention becomes safe at least from the point of view of leakage of information. However, the applicant must file the complete specification of the invention within 12 months of submitting the first application of patent with the provisional specification. However, in case the Inventor is ready with its invention in the form of a new product or industrial process, then the application for the grant of the patent must be filed with complete specification. The complete specification can be submitted at any time after the filing of the provisional application; however, it must be filed with 12 months of making the first application.

Types of patent specifications (Section 9 of the Patent Act, 1970):

  1. Provisional Patent Specifications
  2. Complete Patent Specifications

The provisional specification is filed when the invention is not complete, and the research and development are in the midway, and the Inventor wants to protect the novelty of the invention. In other words, the provisional specification is the first disclosure before the controller of the patent by way of making a formal application in the prescribed manner. The complete specification is filed when the research and development are complete, and the product or the process is fully developed and is ready for mass production or usage. We would be discussing in the forthcoming paragraphs about the provisional specification and why it should be filed at the earliest time possible.

Q. How does a provisional patent work?

All great inventions have their origin in an Idea, though ideas, as such, can not be conferred any protection. The inventions can be patented only if it is novel and new. By novelty, we mean that the invention has not been disclosed to any person, in other words, the invention and the inventive steps leading to the invention is known to only the Inventor or the legal applicant. To secure the novelty, the filing of a patent application with provisional specification is the only proven method. The provisional specification is in the form of a brief description of the invention, about the problems which the invention is seeking to solve, the best method to make the new goods, or to perform a specific industrial process. We advise you to file provisional specification immediately after you are clear about your invention to secure its novelty. However, never forget to submit the complete specification within 12 months of filing the first application.

Q. Is filing a provisional patent mandatory?

Filing a patent application with provisional specification is an option to the inventor/applicant, and it is not mandatory. The patent application can very well be submitted with complete specification at the very first stage provided the Inventor is ready with its invention. However, it is an excellent method to ensure the secrecy of the invention if the same is still at the stage of research and development. You should understand that the provisional application does not mean filing a patent application with just rough details, but it defines the scope of the invention. The complete specification should be closely related to what is in the provisional specifications. The filing of the complete specification does not erase the provisional specification filed earlier. It remains there all the time, and the examiner refers to the provisional specification also while examining the patent application. Hence the drafting of the provisional specification is of equal importance. It is noteworthy that if the complete specification is not filed within 12 months of submitting the patent application with the provisional specification, the application shall be deemed to have been abandoned.

Advantages of a making patent application with provisional specification

  1. The provisional application is cost-effective
  2. After filing of the provisional application, you may very well claim your invention as Patent Pending
  3. Completely takes away the issue of confidentiality
  4. You get time to develop your invention fully (12 months)
  5. Priority is claimed from the date of making the application
  6. You get enough time further the invention 
  7. You also get enough time to check commercial viability
  8. You also get enough time to conduct market research
  9. In case you feel that invention is unviable you can drop the idea
  10. Eventually, the application moves closure to Grant of Patent.

Q. What documents are required to file a provisional patent application?

  • Form 1: It is the prescribed application to file a patent
  • Form 2: This is the form in which provisional specification is filed
  • Form 5: This is a declaration to be signed by the Inventor
  • Form 26: This is a power of attorney for patent attorney/agent
  • The prescribed Government Filing Fee
  • Form 3: Applicable for foreign applicants only
  • If necessary file drawings or you may also submit it with complete specification

Contents of the provisional specification

Patent specification plays a vital role in the success of an invention during its prosecution; A typical patent specification has the following sections:

  1. Title Of The Invention: You should frame th title of the invention in a maximum of 15 words, and it must be precise and meaningful.
  2. Area or Field Of The Invention: Your specification draft must describe the area or field of invention. You should be brief, however, very clear while drafting the area or field of the invention so that while examining the patent application, the examiners understand it correctly.
  3. Background Of Invention & Prior Art: This section describes state of the art similar to or closely resembling your invention. While mentioning the closest filed patent or prior art, you should explain the nature of similarity and how your invention stands apart from that of others.
  4. Economic Advantages Of the Invention: One of the conditions of patentability is the scale of economic advancement. No matter how much technical is the invention, if it has no incremental commercial value, it is of no use. While drafting the patent specification, you should mention the economic aspect in a separate sentence. This should be mentioned in comparison with any existing invention or prior art to that of yours.
  5. Statement Of Invention: This is a statement by the applicant as to what is the innovative feature of the current invention over any present invention or prior art. It will help if you are careful while drafting this, as it is very important to decide on patentability. The statement of the invention should relate to the claims in the final specification.
  6. Summary Of Invention: This provides a basic structure of the invention and must reflect the description and the underlying claims of the invention. This is an overall depiction of all about the invention.
  7. Brief Description Of The Accompanying Drawing: [Optional for Provisional Specification, may be filed at the time in complete specification] The brief description of drawings includes a written description of the invention that explains how to make and use it. It should point to the reference numerals used in the drawings and should be specific. The details should be enough for a person skilled in the art to understand and perform the invention
  8. Detailed Description Of The Invention With Drawing/Examples: [Optional for Provisional Specification, may be filed with complete specification] The detailed description describes in detail what the invention is and how it is made and used. Examples showing how the invention works in an application may or may not be present. It should reflect the complete picture of the invention and should be sufficient for a person skilled in the art to perform the invention by developing necessary technical know‐how.
  9. Claim(s) [Filed with Complete Specification]: An essential aspect of a patent is its claims. The claims should be independent and must be drafted carefully. Each claim must find its source in the specification.
  10. Abstract: An abstract should be drafted in such a manner to make it reflect the technical field of the invention with the existing technical problems and the solution to overcome such problems. It should be briefly drafted and within the limit of 150 words. The aim of the abstract should be to provide better information to third parties. Disclaimer: The above guidelines are the general information to understand the drafting of a patent specification. A patent specification is a techno legal document, and the writing of such a document would require a lot of experience and skill.

Points to remember

  • You should have a good knowledge of patent law and must know what inventions can be patented, as all the inventions may not qualify the test of patentability under the patent act.
  • Before making the formal procedure to file the patent application, doing a comprehensive patent search is advisable to rule out conflict already known inventions.
  • As the provisional specification forms the foundation of the entire patent application, make sure to think ahead of time and try to incorporate as much detail possible in the same.
  • Any aspect or element of the invention or any inventive step which is relevant for the invention should not be missed as the priority claim shall be available only for those disclosures which have been made in the provisional specification.
  • Please remember that the provisional specification always remains on the file of the patent controller, and the complete specification does not replace the provisional specification. On the contrary, both the specifications are read in totality. Hence while drafting the provisional specification, you should be careful.
  • The complete specification of the invention must be filed within 12 months of submitting the provisional application, and if you fail to file the complete specification within the prescribed time, then you would lose the patent itself.
  • The claims should not be filed with provisional specification as the invention is still under development, and claims may vary. Always file claims of the invention in the complete specification.

About The Author

Sanjeev Kumar

As Co-Founder of SETINDIABIZ & Partner at KPS Legal, I am passionate about Corporate Laws, Taxation, & Intellectual Property Rights. Always Love to meet entrepreneurs and work with them to ensure compliance with the legal regime at all time even if they don't like it!

Leave a reply

Your email address will not be published. Required fields are marked *

Shares