Is a provisional patent application necessary?

Is a provisional patent application necessary?

Is a provisional patent application necessary?

In India, provisional patent applications are governed by the Indian Patents Act, 1970. Patents confer exclusive proprietary rights on the inventor of a novel and unique invention with industrial utility.  By obtaining a patent, everyone except the inventor would be unable to monetise the invention. Several guidelines have been provided by the Patent Act of 1970 that assist inventors and patent professionals in acquiring a patent.

In order to acquire patents, you should first learn about the patent specification documents. These documents are technical in nature and are quite complicated. There are two purposes that are to be served by the patent specification. As a first step, the invention should be disclosed to the public so it can be worked on once it becomes a part of the public domain after the patent expires and after the patent expires, you might be able to reuse it. Second, it is important to identify the parts of the invention for which the inventor claims exclusive rights.

A patent search is the first step in the patent drafting process, whereby the inventor or the patent professional, for example, a patent agent or a patent lawyer, compares the invention to the state of the art. As part of the patent application process, this step is taken to ensure that the invention seeking a patent is a new idea and also to check if the invention would be infringing on any existing patents. Once the specifications have been drafted, the whole process of writing them will begin. The provisional specification is by far the most important specification that establishes the priority date for the patent. A provisional specification gives an outline of the invention without digging too deeply into its details. Within 12 months from the date upon which the provisional specification was filed, the complete specification must be filed.

As this is the most important document because it discloses the invention in all of its details, and the inventor asserts exclusive rights to the invention through the claims. There is an exception to this rule, however, which allows the applicant to file the completed specification directly, without filing the provisional specification first. If this is the case, why is it often recommended by experienced professionals to file the provisional specification before the complete specification is complete? I think it is necessary to give a detailed analysis of the importance of a provisional patent application to answer this question.

When it’s not mandatory, why do provisional patent applications get filed?

Provisional patent applications are filed so that an invention can be protected before a complete specification has been submitted. In order to draft a complete specification, the invention must be detailed in great detail.  The R&D (Research and Development) process for most inventions usually takes months to complete. When one waits until he or she has completely figured out the invention before filing the complete specification, getting a priority date might prove too difficult.

In this way, the inventor could attain a priority date by filing the provisional specification along with the preliminary details of his/her invention. Moreover, provisional patent applications do not require claims or diagrams to be submitted, as well as being cheaper to file.  The inventor has 12 full months from the time the provisional patent application is filed to work on the invention and determine the claims, after which the complete specification is filed. In this respect, provisional specifications act as interim protection to inventors, thereby giving them more time to develop their inventions.

Inventors can market their products with the label “Patent Pending” once a provisional patent application has been filed. The inventor will then give notice to the public and potential competitors that they should not attempt to copy or market the product since he will continue to work on it to get it patented.

Benefits of Filing a Provisional Patent Application:

i) Cost-effective:

In addition to being able to work on the invention and looking for funds to market the invention, filing the provisional patent allows the inventor to hire a patent agent to take care of the specification. Compared to a complete specification, a provisional patent application costs less to file.

ii) Provisional Protection:

The invention is protected for a period of 12 months from the date of filing the provisional specification, even before the complete specification discloses the entire invention.

In the absence of a provisional patent application, the inventor would not be eligible for interim protection.

iii) Date of Priority:

Applying for a patent is literally a race against time. It is common that when two patent applications that are very similar are filed, the patent is granted to the application filed earlier among the two. As soon as the inventor gets a path-breaking idea, it is best to file a provisional specification as soon as possible to ensure that the priority date is placed as soon as possible. It is also possible for the inventor to take months together to put together a complete specification of the whole invention, and then to submit it to the corresponding office directly, in which case the date of priority is going to be pushed to a much later date.

iv) Pending Patent:

The inventor can market the product with the label “patent-pending” if the provisional is filed. In other words, this is as good as claiming that the product is soon to be patented, and nobody else can infringe on it.

v) Priority of Foreign Grant:

An inventor can simultaneously file a provisional specification in other countries that are members of the Convention, with a similar priority date. Among the countries that have signed the Paris Convention, there is an agreement that recognises the patent priority among the signatory countries.

Provisional patents are a cost-effective way to gain protection whilst the invention is under development. However, there is no hard and fast rule that mandates a provisional specification filing. The filing of a provisional specification is also strongly influenced by the business goals. There is nothing to lose, but a lot to gain, from filing the provisional patent application.

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