What is a provisional patent application?
When you are at a stage in your research and development work where, it can be disclosed on paper but it’s not a final invention, then you can prepare a description of the invention as provisional specification and submit to patent office to secure the priority date of the invention.
It gives following benefits:
When you complete the required documents and your research work is at level where you can have prototype and experimental results to prove your inventive step you can file complete specification.
Filing the provisional specification is an optional step, if you are at the stage where you have complete information about your invention then you can directly go for complete specification.
A provisional specification is not a rough draft; it defines the field of invention and also defines the scope of the invention to certain extent. Even if you file complete specification later it does not replace the provisional specification, it still remains in the record. The patent office accords the filing date and patent application number to the provisional specification received.
If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned.
How provisional application could save costs in getting patent in India?
If we see a typical life cycle of a patent owner, the most preferred way you get your ROI with the patents is by licensing it to other business. The Success in licensing your patent to other business lies in how you talk to decision makers and project the advantages and potential profits by licensing rights for your patented invention. However instead of going for complete patent, you can choose to go with provisional patent application .
Provisional patent application has remarkable advantages as below:
Low upfront cost:
You end up paying much less for filing a provisional application than filing a complete patent application.
You can say “Patent Pending”:
Although provisional patent is not actually a patent and it will not be converted to complete patent application unless you take further steps... You legally can write “Patent Pending” for your invention. (product prototype) up on filing provisional patent you have secured the priority date as its filing date, so you need not worry about confidentiality when marketing or disclosing your invention (product prototypes)
Time to let invention Evolve:
Filing a complete patent application at very early stage of the invention may not get you fullest potential of invention, filing provisional application secures your priority date (That is you now eligible to have priority date as provisional application filing date although you are not ready with complete invention / complete patent application yet; Provided the scope of the complete patent application filed later remains same) and gives you enough time to work on your invention to the fullest possible potential.
Time to test the commercial potential:
Having secured the priority date by filing a provisional application, you can test few things like:
Willingness of other businesses to license your invention then patented
Get an understanding about commercial worth of invention
Get time to evolve the invention to its fullest potential
Time to conduct real market research to confirm the marketability of the invention
In effect you get full 12 months of time to decide whether to move ahead with complete patent application or not, as during this period you can do extensive market research and find the commercial worth of your invention without worrying about it being stolen or losing the confidentiality.
You can abandon the provisional patent application: (saves you money)
In case you happened to find out that the invention for which you already have filed provisional patent application is not worth going ahead for full patent protections for some reasons like:
The invention is not worth that much commercially
No one willing to buy, license it neither you willing to produce the invention, etc.
You actually save thousands of rupees, you otherwise would have spent on directly going for complete patent application, and if at all decided to abandon it in between for some reasons.
it will Eventually become patent granted (by procedure)
The provisional patent can become granted patent in most of the countries if the complete patent application is filled within 12 months from filing date of provisional patent and entire patent procedure is followed till grant of patent. (Provided the invention is not rejected by the controller)
In such cases for the issued patent in given countries you have the benefit of earlier priority date (that is filing date of provisional patent) as priority date is the main decider relating to prior arts and novelty of the invention in most of the cases.
Things to consider when going for Provisional Application
Be careful when writing provisional application for your invention.
It is a scope defining document:
A provisional application is not a rough draft of your idea or invention. In fact it defines the scope of your invention. So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing complete patent application) will fail to have the earlier priority date (filing date of provisional application). Which means the part of invention you developed after filing provisional which is outside the scope which is set by provisional application will not have the advantage of priority date of provisional application.
Even if you file complete specification later it does not replace the provisional specification, it still remains in the record.
The patent office allocates the filing date and patent application number to the provisional application received. If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned.
The applicant who has filed a provisional patent application must file a non-provisional patent application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
The description of invention should not be limiting:
The language used in patent application plays an important role in defining its scope: While writing description for invention, you should avoid using limiting words like “must have” “consists” “essential” Instead try to describe elements of the invention with as broad scope as possible: You can use terms like a “writing device” instead of directly saying “a pen” which would be of limiting scope and can eliminate other writing devices like pencil from the scope.
Contents of Provisional Specification
Claims may not be part of the Provisional Specification.
Get an idea about the costs and time required for getting "patent pending" status for your invention by contacting patent agent and patent attorney in India here.