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 Patent

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.

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Eligibility and Requirements for Provisional Patent

Evaluating eligibility for a provisional patent is an essential step in securing patent protection. Although provisional patents provide several advantages, not all inventions are suitable for this type of initial protection. The criteria are based on the originality, utility, scope, description, and inventorship of the invention. Key factors to consider include:

1. Novelty: The invention must be new and not publicly disclosed before the provisional application filing date. Prior public disclosures, such as publications, presentations, or sales offers, can undermine the invention’s novelty.
2. Inventiveness: Also known as non-obviousness, inventiveness means the invention should involve an innovative step that is not obvious to someone skilled in the relevant technological field. The invention should represent a substantial advancement over existing knowledge in the field.
3. Utility: The invention must have practical utility, meaning it should be usable or applicable in a way that provides a tangible benefit. It should serve a useful purpose or solve a specific problem.
4. Within the Scope of Patent Laws: Provisional patents can be obtained for various types of inventions, including products, processes, machines, compositions of matter, or improvements. The invention’s subject matter should fall within the scope of what is patentable under patent laws.
5. Detailed Patent Specification: The provisional specification must provide an enabling disclosure containing sufficient detail to allow a person skilled in the relevant field to understand and replicate the invention without undue experimentation. The description should be clear, concise, and comprehensive enough to enable others to practice the invention.
6. Proper Inventorship Claims: The application must accurately reflect the inventors who have significantly contributed to the conception of the invention. It’s crucial to identify all involved inventors and properly attribute their contributions.
7. Timely Filing: The application must be filed within one year of any public disclosure of the invention. Public disclosures include publications, presentations, demonstrations, or sales offers. Filing within this timeframe is essential to preserving the invention’s novelty and securing priority rights.

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.

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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.

Documents Required for Filing of Provisional Patent Application 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

Elements of Provisional Patents

Title of the Invention: A brief and specific title that encapsulates the core of the invention.

Area or Field of the Invention: A clear description of the technological area to assist patent examiners.

Background of Invention & Prior Art: An explanation of existing technologies and how the invention differs from them.

Economic Advantages of the Invention: An illustration of the invention’s commercial value and economic benefits.

Statement of Invention: A description highlighting the novel features that set the invention apart.

Summary of Invention: A comprehensive overview outlining the main aspects of the invention.

Brief Description of Accompanying Drawings: Optional for provisional specifications, providing a brief overview of any drawings.

Detailed Description of the Invention with Drawings/Examples: Optional for provisional specifications, giving a detailed explanation of the invention with illustrations or examples.

Claim(s): Filed with the complete specification, critical for defining the invention’s scope.

Abstract: A concise summary reflecting the technical field, the problems addressed, and the solutions provided by the invention.

Process of Filing a Provisional Patent Application

Applying for a provisional patent involves careful attention to detail and adherence to specific procedures. Each step is crucial for the success of the application and for securing intellectual property rights. Here is a detailed guide to help you file a provisional application or patent registration, ensuring your innovative ideas are protected effectively and legally:

1. Conduct Preliminary Research: Before starting the application process, thoroughly research to confirm the novelty and inventiveness of your invention. Review existing patents, literature, and databases to assess your invention’s uniqueness and patentability. A comprehensive patent search increases the likelihood of application approval.
2. Draft the Patent Description and Specification: Prepare a detailed description of your invention, highlighting its features, functionalities, and unique aspects. Include drawings or diagrams to illustrate the invention’s structure and operation effectively. Draft the provisional specification document detailing the technical aspects of your invention. Clearly describe its novelty, inventive step, and practical utility. Ensure the specification meets the enablement requirement, providing enough detail for someone skilled in the field to replicate the invention.
3. Submit Provisional Patent Forms: Complete the necessary application forms, including Form 1 for the patent application and Form 2 for the provisional specification. Provide accurate information and ensure all required documents are attached. Submit the completed forms and provisional specifications to the appropriate patent office. Pay the necessary filing fees and any associated charges to finalize the application process.
4. Follow-Up with Complete Specification: Within 12 months of filing the provisional application, prepare and submit the complete specification and application. This should build upon the provisional specification and include formal claims. Upon approval of the complete application, the applicant receives patent protection for 20 years, which is neither extendable nor renewable. After this period, the invention enters the public domain.

Fees Payable for a Provisional Patent

• Government Filing Fee: For startups, natural persons, or small entities, the cost of filing a provisional patent application with a standard specification of up to 30 pages is Rs. 1,600 (Rs. 1,750 for offline filing). For other applicants, the fee is Rs. 8,000 (Rs. 8,800 for offline filing). If the specification exceeds 30 pages, the additional charges are Rs. 160 per sheet for natural persons, startups, and small entities (Rs. 800 per sheet for offline filing) and Rs. 180 per sheet for others (Rs. 880 for offline filing).
• Professional Fees: Inventors may incur fees if they hire patent attorneys or agents to assist with preparing and filing the application. These fees vary depending on the professional’s expertise and experience.
• Additional Expenses: Additional costs may arise from drafting the provisional specification, conducting prior art searches, and preparing necessary drawings or diagrams.

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.

Mistakes to Avoid in Provisional Patent Applications

Here are some common errors to avoid when drafting a provisional patent application:

1. Insufficient Description: Ensure the application provides a detailed and clear description of the invention. An inadequate description can result in the application being rejected.
2. Incomplete Drawings: Include all necessary drawings if they are required to understand the invention. Incomplete or incorrect drawings can lead to a poor application and potential rejection.
3. Incorrect Filing: The application must be filed correctly and within the specified time limits. Mistakes in the filing process can cause the application to be rejected.
4. Lack of Clarity: Write the application in clear and concise language. Using vague or ambiguous terms can cause confusion and result in a rejected application.
5. Missing Parts: Include all required components of the application, such as the title, field of the invention, and summary. Omitting any necessary parts can lead to rejection.
6. Lack of Support: Ensure the application has sufficient support to meet the requirements of the Patent Act. Insufficient support can result in rejection.

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 develop your innovation and submit a comprehensive patent application fully so that 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.