Companies and inventors benefit from patent protection in today’s era because it creates a legal boundary around their inventions through a patent application. In addition to protecting the invention for a period of 20 years, submitting a patent application prior to disclosing the invention promotes the creation of new products and services for the company. A strategic patenting system should therefore be designed and implemented which should be aligned and monitored while they conduct research in a particular technical field. Nonetheless, before you launch or expose your invention to the public, you should consult with an experienced patent attorney or registered patent agent.
A patent is granted to the first person who files the patent application for an invention, i.e. the person who files the patent application first is eligible for the patent. Patent applications in India must be filed at the Indian Patent Office (IPO), accompanied by either a provisional specification or a full specification.
Preliminary patent applications are filed before a complete specification is filed. An application does not need to be filed with a provisional specification, therefore a complete specification can be filed directly with the application. If an invention is not complete, and the applicant wishes to obtain a priority date or first filing date by which he/she can use the term “patent pending,” then it is recommended to file a provisional patent specification.
Provisional Patent Applications – When To File
If the following circumstances apply, the Applicant may consider filing a provisional patent application:
- Concern over similar patent applications by competitors
- Patent applicants cannot afford to file a complete patent specification
- while a product/process is in development
- The inventor or others may inadvertently publish or disclose the invention orally
- at an upcoming trade show or exhibition
- announcing a new product launch
- launch. Contacting potential clients, investors, customers, vendors, etc.
The filing of a provisional application is recommended under such circumstances. An effective provisional specification should clearly define the invention, its scope of application, and cover the major details of the invention much like a complete specification.
Risks of filing a provisional patent application
In addition to the benefits of filing a provisional patent application, there are some possible risks as well.
- In India, if the application is not completed within 12 months after filing, the provisional application automatically becomes abandoned. Further extensions are not permitted under the Indian Patent Law. This means that inventors have the option to submit a complete specification or abandon their applications.
- It is not the Patent Office that examines patent applications. Complete applications are required to be reviewed. Provisional applications, therefore, have the potential to delay the examination process of a patent application.
- A provisional application also presents the risk that the inventor might leave out some essential details that are required in the final application. If the later application wants to claim the benefit of the earlier filing date, it must explicitly or implicitly describe the features claimed in the earlier application. Therefore, the the scope of the provisional application is important.
- Despite the fact that filing a provisional application allows employees of a company who work on the invention to disclose it publically, any disclosure of a matter that is not covered in a provisional application can actually harm the overall protection of the invention.
- An applicant may benefit from filing a provisional patent application by securing an earlier filing date, deferring costs, and gaining time to refine their invention. It’s important to note that an incomplete or poorly written provisional patent specification may undermine the ability to obtain valid patent rights if the complete application is filed later.
A complete after provisional application is beneficial, but also crucial because it does not require a substantial amount of rewriting and reviewing if there are no substantial changes in the subject matter. Thus, making a smart decision from a patent perspective on when and what to file as a provisional patent specification requires thorough consideration, and is best accomplished with the same level of diligence as filing a complete patent application and with the consultation of patent experts.