Provisional Patents – Advantages and Regulatory Framework in India

Introduction

Patents are statutory rights granted by respective governments. They give the creator an exclusive right to his innovation and bar others from making, selling, using, or importing the product or the process for a specific number of years without the creator’s prior permission. Patents can also be provided to enhance or improve products that were available earlier.

Definition of Provisional Patents

A patent specification is generally classified into two types: a complete patent specification and a provisional patent specification. A provisional patent application is a preliminary step before filing a regular patent to obtain interim protection. It is a quicker method of filing a patent application to protect the invention.

Advantages of Filing a Provisional Patent Application

1. Speedy Patent Application: With more inventions coming up every day, it is better to file a patent application earlier and get the work done. For this reason, a provisional patent is much easier in terms of application procedure and also claiming a priority date.
2. The flexibility of the Period: After filing the provisional patent, the creator has 12 months to experiment with and analyze the invention. This gives the creator time to decide whether to proceed with the invention.
3. Cost reduction: When filing the provisional patent application, it is not mandatory or required to include parts such as claims, so this reduces cost, and a lot of money can be saved. The cost split in specifications also saves a lot of money in terms of drafting the application.
4. Pending Patent: After filing the provisional patent application, the creator can refer to the invention as patent-pending, which could ward off potential infringements.
5. Priority date: Filing a provisional patent application helps secure the invention’s priority over any other invention being developed in the same field.
6. Confidentiality: A provisional patent will preserve confidentiality and maintain privacy without publication. However, incomplete applications might cause problems in the future.

Regulatory Framework for Provisional Patents

The concept of provisional patents is governed and regulated by the following provisions

1. Patent Act,1970
2. Patent Amendment Rules 2020

Furthermore, the Controller General of Patents, Designs, and Trademarks will act as the main force for administering the grant of patents in India. The patent applications are generally filed with the Indian Patent Office or CGPDTM.

Elements of Provisional Patents

1. Title of Invention: The specification must start with the invention’s title and describe its features. It should be under fifteen words, and the patent name must not be very fancy or intricate. The language used in the application is an essential part. It must explain the broad scope of the invention.
2. Description of Invention: The description of the invention must start after the title on a new page. It must entail the preamble and consist of the field and object of the invention, which is a very important part. It is not mandatory to include or mention claims in the specification.
3. Invention and Prior Art: This part describes the state of the art and the art that is similar to the invention. The applicant must keep in mind that the invention must be described in such a way that it stands out from other inventions that are similar to this and must carefully mention the prior art.

Procedure for Filing of Provisional Patent in India

1. First, a provisional specification must be drafted and filed to proceed with the application of a provisional patent.

2. While drafting the specification, it must be noted that all parts of the specification are to be included for filing the specification.

Moreover, the provisional patent application filed with the Indian Patent Office must include all the documents and forms, such as 

• Form 1- Application for grant of Patent
• Form 2- Provisional Specification
• Form 5- Declaration of Inventorship of Patent
• Form 3- Statement and undertaking of foreign applications
• Form 26- authorization of patent agent, if a patent agent is used
• Form 28- small entity form, if claiming small entity status
  

Fees Payable for a Provisional Patent

The cost of filing an individual application for a provisional patent is Rs. 1750, and the fee for requesting further examination is Rs. 4400. If the application is filed online, the cost is generally around Rs. 1600.

Licensing of Provisional Patents

Nowadays, licensing the patent to other individuals or entities in exchange for a specific fee or royalty is a standard procedure. This can be done legally by way of a license or mou agreement, which specifies the terms and conditions based on the mutual consent of the parties to the agreement. This is another way to use the patent other than the usual method of using it for commercial purposes and personal benefits.

The agreement will be legally binding, and the business will grant the other party the right to provide support and promote brand awareness in exchange for a fair monetary exchange. This is just a way of showing support to other upcoming businesses and also building a franchisor-franchisee relationship.

Things to consider while going for a Provisional Patent Application

1. The patent application must not provide a brief outline of the innovation. It must define the idea extensively.
2. Any parts that are out of the scope of the application that the inventor develops after the 12-month period will not be included and may not have the advantage of a priority date.
3. If the complete application is not filed within a year, then the provisional patent application may be rejected and abandoned. The complete specification, on the other hand, may be filed at a later date as the provisional patent application will always be on record and will not replace the patent application.

Conclusion

From the above discussion, it can be understood that inventors frequently use a provisional patent application to jumpstart the patenting process. You have a year to fully develop your innovation and submit a comprehensive patent application, so a provisional patent application might save you time and money.

The application for a provisional patent in India takes the form of an overview of the invention, a discussion of the problems it seeks to address, and recommendations for the best way to manufacture novel products or carry out a certain industrial process.

Frequently Asked Questions

Q1. What is a Provisional Patent Application?

Ans1. A provisional patent application is a preliminary filing for a patent, offering temporary protection and a priority date for further development.

Q2. What are the advantages of a Provisional Patent Application?

Ans2. Advantages include:

• Faster filing process and priority date establishment
• 12 months to develop the invention further
• Lower cost compared to a complete patent application
• Ability to advertise the invention as “patent pending”
• Maintains confidentiality (but incomplete applications could have drawbacks)

Q3. How is a Provisional Patent Application regulated in India?

Ans3. The Patent Act, 1970, Patent Amendment Rules 2020, and the Controller General of Patents, Designs & Trademarks govern provisional patents in India.

Q4. What are the elements of a Provisional Patent Application?

Ans4. It includes:

• Title (under 15 words, describing invention)
• Description (background, invention details, excluding claims)
• Prior art (similar inventions already existing)

Q5. How do I file a Provisional Patent Application in India?

Ans5. You need to draft and file a provisional specification with the Indian Patent Office. This includes various forms like Application for Grant (Form 1), Provisional Specification (Form 2), and Declaration of Inventorship (Form 5).

Q6. What are the fees for a Provisional Patent Application?

Ans6. The individual application fee is Rs. 1750 (approx. $22 USD), and requesting further examination costs Rs. 4400 (approx. $55 USD). Online filing may be cheaper.

Q7. Can I license a Provisional Patent?

Ans7. Yes, licensing the patent to others for a fee or royalty through a license agreement is possible.

Q8. What are some things to consider before filing?

Ans8.

• The application needs a detailed description, not a brief outline.
• Developments after 12 months might not be covered by the priority date.
• Not filing a complete application within a year may lead to abandonment.

Q9. What happens after filing a Provisional Patent Application?

Ans9. You have 12 months to develop the invention further and file a complete patent application.

Q10. What are the benefits of using a Provisional Patent Application?

Ans10. It saves time and money by giving you a year to develop the invention before committing to a complete patent application.