Legal Guide

Provisional Patents-Advantages & Regulatory Framework in India

by Nandita Meenakshi · 3 min read

Provisional Patents- Overview

Introduction

The patent is defined as a statutory right granted by respective governments. It gives an exclusive right to the creator for his innovation and bars others from making, selling, using, or importing the product or the process for a specific number of years without the prior permission of the creator. Patents can also be provided for enhancing or improving 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 for obtaining interim protection. A provisional patent 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 at an earlier date and get the work done. For this reason, a provisional patent is much easier in terms of application procedure and also claiming priority date.
  2. The flexibility of Time period: After filing the provisional patent, the creator gets a period of 12 months to experiment and analyze the invention. This way, the creator gets time to decide whether to go ahead with the invention.
  3. Cost reduction: While 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. There is also a lot of money saved in terms of drafting the application because of the cost-split in specifications.
  4. Pending Patent: After filing the provisional patent application. The creator can use the term patent pending for the invention. This could ward off any potential infringements.
  5. Priority date: The filing of a provisional patent application helps in securing the priority for the invention and against any other invention that is 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 title of the invention and must describe the features of the invention. It should be under fifteen words, and the name of the patent must not be very fancy or intricate. The language that is used in the application is an essential part. It must be used in such a way that it explains 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 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 is required to be drafted and filed for further procedure of 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 application for a provisional patent for an individual is Rs 1750, and the fee for making a request for further examination would be Rs 4400. If the application is filed online, then the cost is generally around Rs. 1600.

Licensing of Provisional Patents

It is a standard procedure nowadays to license the patent to other individuals or an entity in exchange for a specific fee or royalty. 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 for 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 provision of the patent application must not be 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 months 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. 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.

The licence agreement is a legally binding document between the franchisor and the franchisee. Consult a qualified legal expert to know more

Nandita Meenakshi

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Nandita Meenakshi

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