Filing a Provisional Patent Specification – An Overview

Provisional Patent Specification
Karan Singh
| Updated: May 21, 2021 | Category: Patent

As per the Indian Patent Act 1970[1] (Section 9), there are two different types of Patent Specifications:

  1. Provisional Patent Specification;
  2. Complete Patent Specification (Non-Provisional as per USPTO).

A Provisional Patent Specification is an initial application before filing a usual Patent. It extensively describes the invention but not completely. Before a Complete Patent Specification, a Provisional Patent document may be filed in the office of the Controller of Patents concerning a prospective Patent.

It gets the term “Provisional” in its name from being unfinished and a predecessor of a complete specification which comes later. Also, although it is not compulsory, it is highly endorsed as it has a lot of advantages for the inventor.

Significance of filing a Provisional Patent Specification

filing a Provisional Patent Specification
  • Previous Patent Filing Date: On the filing of the Provisional Patent Specification, the inventor is authorised to a last Patent filing date. This is essential as it protects the priority date for the applicant. The advantages of this are numerous:
  1. The fact that same inventions which are filed after the provisional filing date cannot become earlier art for the applicants’ invention;
  2. If any debate concerning the proprietorship of the invention appears, the Patent Office will accept the prior filing date of Provisional Patent as the date of filing.
  • Cost-Effective: In advance cost of a Provisional Patent Specification is much low than that of a Complete Patent Specification application which saves thousands of rupees for the inventor in terms of professional fees.

Also, as it’s technologically more articulate (doesn’t include earlier art search, claims, comprehensive, and detailed drawings) in contrast to the Complete Specification, it costs lower money and resources to prepare. Provisional Patent Specification can also be prepared. Such Provisional Patents can also be prepared by the inventor himself.

  • Time Period: It is vital to have sufficient time to improve claims in the research industry. When a new invention is made, you are uninformed of what basis to claim security for it. But, there is a processing time of 12 months between the Complete Patent Specifications and Provisional Patent Specification. This in-between time can be used for:
  1. Examining and researching the invention value in the market and its commercial feasibility;
  2. Advancing its properties and making it a more feasible product for the market.
  • Patent Pending: After the Provisional Specification has been filed, the inventor can formally and legally use the Patent Applied or Patent Pending tag for their invention. This tag will be beneficial in receiving funds as the originality of the invention stand up while the primary business model is advanced. It can be used as a huge selling point.
  • Ambit of Abandonment: If the applicant files an application for provisional specification and then realises that it is not economically feasible or chooses not to get a Patent, he or she might abandon it. However, if he or she has gone for a complete specification in a similar case, they would have already spent lots of money on it, and the abandonment would have been costly.
  • Privacy: Since there is no publication of the application of Patent Registration, the prioritised data can be maintained by privacy.

Points to Remember While Filing a Provisional Patent Specification

  • It’s not an irregular draft of the Complete Patent Specification. Whereas it states the ambit of the invention, and it is the Provisional Patent Specification on which the following Complete Patent Specification and the approval of Patent will be based upon.

All the invention factors introduced during the twelve months between the Provisional and Complete Patent Specification filing will not get the prior date. Any improvement or addition to the invention after filing the Provisional Patent Specification outside the ambit arranged by the provisional application will not benefit from the precedence date of the provisional application.

  • The applicant should remember that this is not the final or conclusive step towards safeguarding the Patent. It is the first step in the procedure towards Patent Registration.
  • Also, it should remember that if the time period of 12 twelve months within which the applicant or inventor has to file Complete Patent Specification is not followed to then, the application of Patent will be considered to be “Abandoned”.
  • Although the privacy is maintained after the application of Provisional Patent, full and enough disclosures must be made in the application of Provisional Patent as incomplete applications will be unfavourable for the inventor in the future, and his scope of protecting a Patent may significantly reduce.
  • An uneven set of claims must be designed even though they require not to be a part of the Provisional Patent Application. This must be done to visualise the invention and know the implications of the invention fully.

Vital Documents Required to File a Provisional Patent Specification

Following are all the vital documents that should be in proper order for a Provisional Patent Specification:

  1. Form 1: This form is the application for the Patent Registration (The Patents Act, 1970 and The Patent Rules, 2003).
  2. Form 2: This is the Provisional Specifications.
  3. Form 5: Declaration of Inventorship.
  4. Form 26: Power of Attorney. In case your Patent is filed by a Patent Agent, then this form is essential, otherwise not.
  5. Fees for E-filing (Patent Statutory Fee).
  6. Form 3 (Corresponding Foreign Patent Application Statement and Undertakings).
  7. Priority Document.
  8. Drawings or illustration of the invention.

Different Components of a Provisional Patent Specification

  • Title: The Provisional Patent Specification must commence with the title of the invention. The title must be honestly captured features of the invention and must be short and to the point. It must be under 15 words. The inventor’s name, the term “Patent”, the abbreviation “etc.” words in different languages or any whim words must not be used in the title.

You can check an example of Patent Title below:

  1. “a steering mechanism including an automatic feed-back circuit”.
  2.  “an insecticide including X, Y, Z; or”.
  • Description: It begins with the Preamble & includes the object and field of invention. It commences on a new page after the title. The Provisional Patent Specification doesn’t need to have claims.
  • Preamble: The invention’s description in a Provisional Specification begins with the Preamble “The following Specification mentions the invention”.
  • Field: The technological field to which the invention belongs must be described under this section. It must be frangible to the point that it can be easily recognised that what is the invention’s nature and categories of its technology. While introducing the field, it should be remembered that it doesn’t restrict the scope of the invention in any sense. For instance, the word “Liquid Dispensing Machine” must be used in the place of “Coffee Dispensing Machine”, in which case it would restrict the ambit and remove dispensing soda, tea, etc.
  • Object: This section is representing the requirement of the invention. The benefits of the invention should be mainly solutions made by the invention. The declarations which can be used in this section consist ‘the principal object of this invention is ……’; ‘Another object of the invention is …..’.

Conclusion

Patent Attorneys in India believe that a Provisional Patent Specification may not be of high utility. But, it does save lots of money concerning the professional fee of Patent Agent involved; however, the legal fees as per First Schedule under The Patent Rules, 2003 is the similar case of both Provisional & Complete Patent Specification.

Also, inventors or the Patent applicant can file one to 2 pages of the Provisional Patent application themselves, and at ease, assume that they will come in a year later and pay an Attorney to write a Complete Patent Specification application.

Read our article:Benefits of Provisional Patent – An Overview

Spread the love
Karan Singh

A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

docsbizkit
 

Related Articles

Patent Foreign filing license
| Date: May 04, 2021 | Category: Patent

An Overview on the Patent Foreign filing license

Patent Foreign filing license is a license that the patentee gets when the applicant or any company decides to file an application for patent in a foreign country or the...

Read More
Double Patenting
| Date: Dec 09, 2021 | Category: Patent

What do you mean by Double Patenting? – An Overview

Double Patenting is the practice or a method of attempting to obtain various Patents in a similar region. An inventor can file applications of multiple Patents in multiple countries for...

Read More
Section 80RRB
| Date: Apr 03, 2021 | Category: Patent

A Comprehensive Analysis on Section 80RRB Deduction for Patent Royalty

Section 80RRB was announced to make sure that someone who has done extraordinary work gets their reward. This facility is provided in the Income Tax Act for taxpayers attaining an...

Read More

ARTICLES

Hi! My name is Akanksha! Let's talk.