Innovation Patent

Patent strategy: Filing a provisional patent application (specification)


Inventors often have many questions related to patent filing and some general ideas about patenting.  But the question that I am asked many times is about the procedure, costs and how/where to start.  I usually advise inventors to go for  provisional patent application (called as a provisional specification in India) first.  This post provides a basic overview of provisional applications, and lists out the pros and the cons.  It would be beneficial to inventors who are looking forward to take their first step in patents; and it would be beneficial to prospective patent agent exam takers at our patent office.

A provisional application is named as provisional because it is not complete and acts as a placeholder for a later complete specification.  Therefore, it is the first document that is filed at a patent office in relation to a prospective patent.  
It provides excellent benefits when compared to the costs.  An inventor gets some time (one year) from the date of filing the provisional specification to file a complete specification. The first benefit is the filing date of the provisional is accorded to the complete specification at the time of examination with respect to what was disclosed in the provisional.  The second benefit is in terms of costs.  Costs for a provisional are extremely low as compared to a non-provisional/complete specification.  The benefit is in terms of simplicity-an inventor can herself file the provisional application because it needs no claims.  A provisional application is proof that the inventor had the concept and idea at the time of filing of the provisional.  Inventors get an additional time (1 year) to work on the provisional application.  However, care should taken to ensure that the material is disclosed properly in the provisional application.  Inventors working alone, should ensure that they disclose their invention adequately in the provisional.  In case, relevant material is left out and the inventor later wants to include it in the complete specification, then she may not get the benefit of early filing with respect to the material left out.  
The first benefit is the most important: Because the provisional specification entitles an inventor to a filing date, the early filing by the inventor prevents any other related inventions from becoming prior art to the inventor’s application. Simply put, this means that any application whether provisional or not, filed after the filing date of the provisional cannot be used as prior art against the invention disclosed in the provisional application.        
The second major benefit is in terms of costs.  The inventor has the option of filing a complete specification at a later date and can therefore defer costs.  A provisional application does not require any claims; there is generally no requirement of a prior art search or exhaustive and detailed drawings-hence the inventor can file the provisional application herself.  The time period of 12 months made available to inventor after filing the provisional may be used for  researching on the value of the application/patent, the market, discussion with investors and the like.  
Because there is almost no downside of filing a provisional application, it is strongly recommended.  In addition, the most recent amendments to the US patent laws, discussed here, actually encourage provisional application filing. 
Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is a co-founder of RHA Legal, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

18 comments.

  1. AvatarAnonymous

    What happens if an inventor does not decide to go through with the complete specification filing? Is the provisional application disclosed in that case?

    Reply
  2. AvatarKshitij

    Rajiv,

    Very nice post. In addition, the provisional application provides a “patent pending” or “patent applied” tag, which is a very good marketing USP. It should be mentioned that in the 12 months, the inventors can simultaneously evaluate the marketability and acceptability of the product in addition to researching and improving its features. This may allow inventors to parallely arrange for fundings by flashing the “patent pending” tag meanwhile setting up a business model of actually taking the product to the market.

    PS: I see you use the e-filing platform. I have started using it lately. How has been your experience with it? Of course, there are many limitations of the platform?

    Regards,
    Kshitij

    Reply
  3. AvatarRajiv Kr. Choudhry

    Anonymous @ 2:46: Yes, a non-provisional (NP) can claim priority to multiple provisional applications. That said, the examiner can always give a claim the later priority date depending on disclosure.

    Anonymous @ 2:48: If an inventor does not decide to go through with the NP filing, then there is always a chance that somebody else might file an application having a similar idea. The provisional application does not automatically become public in that case.

    @ Kshitij: Thank you! With regards to the patent pending, it definitely helps in discussions with investors because the inventor is assured that in case, the deal does not go through, the investor cannot claim any rights to the invention as a formal provisional application has been filed.
    The e-filing is cumbersome-it can be made more user friendly but for now it works and for that I thank the powers to be at the patent office.

    Reply
  4. AvatarBSReddy

    Dear Rajiv,

    it is very nice information. I have a doubt here, my provisional application contain five inventor names and at the time of filing of complete specification (CS) if two are three inventors left the company,

    Can I include all the inventor names in the CS at the same if a new inventor worked on CS can i include this new Inventor name in CS?

    Best regards,

    Reply
  5. AvatarAnonymous

    @BSReddy: 1. The answer depends if you are including the inventors contribution-in terms of claims, and not just text in the specification. You should have asked the inventors (who left) to assign any rights in the provisional to you/your company. 2. You can add the new inventor in the CS provided you can identify the contribution clearly.

    Reply
  6. AvatarSumit Kumar

    Hi Rajiv,

    Nice post. Yes filing a provisional is indeed a good practice. I get two other questions regarding provisional though. Would appreciated if you touched upon these a bit:
    1. In situations where a quick foreign filing is required and the inventors are Indian residents, does the filing of a provisional application obviate the requirement of getting a Indian waiver (under section 39)? And if so, isn’t it a simpler and quicker approach than filing for a waiver which normally takes 2-weeks, and fees for both are same (Rs 4000).

    2. Does the twenty year patent term start from the date of filing of the provisional or the complete specification? Under US and EP laws it is clear that the patent term starts only from the date of filing the complete or non-provisional application (giving the patent, in effect, a life of 21 years). Is it the same in India? Indian law (sec 53), says that the life of a patent is twenty years from the “date of filing of application for the patent”. It is not clear though that whether this refers to the date of filing of the complete specification or the provisional application.

    Reply
  7. AvatarRajiv Kr. Choudhry

    @Sumit: Usual caveat applies: not legal or formal advise.

    1. In no way does the filing of a provisional obviate the foreign filing license at the IPO. It may be quicker to directly file but it runs afoul of the permission requirement.

    2. In India, term starts from the day of filing the complete specification-that is when the public gets to know the so called best mode-or the details of the invention.

    Reply
  8. AvatarAditya Nair

    Hi,

    Thanks for the post.. Just wanted to check up, for a software you need to get a copyright, is there a similar process of obtaining a Provisional Copyright or something like that.
    Appreciate your help.

    Regards,
    Aditya
    nairaditgmail.com

    Reply
  9. Avatarअशोक पुनमिया

    आदरणीय राजीव जी,
    मैं राजस्थान के एक छोटे कसबे में रहता हूँ.आपका ब्लौग पढ़ कर मुझे लगा कि मैं महीनों से जिस समस्या का हल ढूंढ़ रहा हूँ,आपके पास मिल सकता है.
    मेरे पिताजी ने गृह उपयोगी काफी इन्वेंशन किये हैं,जो पेटेंटबल है,किन्तु छोटी जगह पर रहने के कारण इन सारे तरीकों से अनजान हैं.मैं आपसे जानना चाहता हूँ कि क्या मैं स्वयं ‘पेटेंट प्रोविजनल अप्लिकेशन’ कर सकता हूँ?क्या यह ऑनलाइन भी संभव है?यदि मैं यह काम किसी वकील के माध्यम से करवाता हूँ तो मुझे अंदाज़न कितना खर्च करना पडेगा? ‘पेटेंट प्रोविजनल अप्लिकेशन’ के बाद क्या मैं अपना इन्वेंशन,सुरक्षित रूप से मेन्युफेक्चर्स को दिखा सकता हूँ? कृपया मेरी इन तमाम जिज्ञासाओं का निवारण करें तो मैं आपका बहुत आभारी रहूंगा.
    सकारत्मक उत्तर के ज़वाब में,
    आपका–
    अशोक कुमार जैन

    Reply
  10. AvatarVinayan

    Hi Rajeev,
    Thank you for the informative article..I do have a small doubt with regard to online filing, hope you could share your knowledge on the same. Is it possible to file the complete specification through online option if the provisional was filed offline? Kindly Enlighten.
    Regards,
    Vinayan

    Reply
  11. AvatarSuyash Deodhar

    Namaste, This is Suyash Deodhar from India. I am an undergraduate student pursuing a bachelor’s degree in Pharmacy. i had the following queries:
    1) are multiple provisional patents allowed as per the Indian Patent act?
    2)i have come up with a process of determining the water content of a solid or liquid sample. the last step from that series has already been published and is not ours. Will that be a problem? The reactions employed are known but the combinations of these reactions for this purpose is novel. Can this be patented?
    3) I came up with a device for the said process and then realized that the device cant be limited for this one process. So i added certain features added to the device which were not central to this one reaction but enhanced its versatility for other reactions.So, should we go for two separate patents of product and process? can the process patent be less credible and get rejected? or should we club it into a single patent?

    Reply
  12. Avatarsonia singh

    Dear Sir

    If I am not able to complete my invention within the 12 months of provisional patent application, can I file the conventional patent later?

    Reply
  13. AvatarAshkan

    Hi There,

    Is it possible for a patent attorney and any body esle to search through filed provisional patents?

    Is it possible to hide inventors’ names at the time of filing a provisional patent?

    Thanks
    Ashkan

    Reply

Leave a Reply

Your email address will not be published.