A guide to filing a provisional patent specification in India

Last Updated at: July 11, 2020
15936
Patent Registration
A guide to filing a Provisional Patent specification in India

First, let us understand the main idea of what is a provisional patent specification.

As per Section 9 of the Indian Patent Act 1970, there are two kinds of patent specifications,

  1. Provisional Patent Specifications
  2. Complete Patent Specifications (Non-Provisional according to USPTO)

A provisional patent specification is the beginning application before filing a usual patent. It describes the invention in a broad perspective but not completely. A provisional patent specification is a document which may be filed before a Complete Patent Specification in the Office of the Controller of Patents pertaining to an outlook patent.

It receives the word “provisional” from being incomplete and a predecessor of a complete specification which comes afterwards. Even though it is not compulsory, it is mainly suggested as it has a lot of advantages for the inventor.

Importance of Filing a Provisional Patent Specification

Prior patent filing date:

After the filing of the Provisional Patent Specification, the inventor is entitled to an earlier filing date. It secures the priority date and has more advantages such as:

  • Alike inventions which are filed after the filing date of the provisional will not get priority before the applicant’s invention.
  • If any dispute occurs regarding ownership of the invention, the Patent Office will take into consideration the provisional patent’s earlier filing date as the date of filing.

Cost-efficient:

The initial cost of a provisional patent specification is comparatively lower than that of a complete patent application which saves a lot of money for the inventor with regard to professional fees.

Moreover, it is technically clear as compared to the complete specification, inexpensive and lesser resources are required to prepare it. A provisional patent specification can also be prepared by the inventor himself/herself.

Time period:

As a precaution, it is essential to have enough time to develop claims in the research industry. When a new invention is created, you are unaware of what basis to claim protection for it. However, there is a processing period of twelve months between the provisional patent specification and complete patent specification. This in-between time can be used for:

    • Researching and analyzing the value of the invention in the market and its commercial viability.
    • Advancing its features and making it a more viable product for the market.

Patent Your Innovation Right Now

 

Pending patent:

After the provisional patent specification has been filed the inventor can officially and legally use the “Patent Pending” or “Patent Applied” tag for their invention. This tag will further be helpful in receiving funds as the authenticity of the invention rises while the main business model is being advanced. It can be used as a great selling point.

Scope of abandonment:

If an inventor goes for a provisional specification and at some point decides that the product created is not commercially viable and chooses not to get a patent, then it can be easily abandoned. Though in a similar situation, if a complete specification would have been done that would have been extremely costly and lots of money would have already been spent on that process.

Secrecy:

Since there is no publication of the patent application, the prioritized data can be maintained by secrecy.

Key points to know while filing a provisional patent specification

As an applicant, the below-mentioned key points should be taken into consideration:

  • The complete patent specification is an official and legal document. It defines the scope of the invention and it is the provisional patent specification upon which the following complete specification and most importantly, the grant of the Patent will be based.
  • If any elements are created from the time duration of 12 months between the provisional patent specification and complete patent specification filing shall not be given a priority date.  Any new invention after the filing process of the provisional patent specification will not be considered and shall not get the benefit of the provisional application.
  • This step to filing the provisional patent specification should be considered as the initial and first step towards the patent registration.
  • If the patent specification is not filed within the time duration of 12 months, then the patent application will be ‘abandoned’.
  • Confidentiality will be maintained after the provisional patent application but it is equally essential for important disclosures to be made since incomplete applications will be disadvantageous for the applicant in the future processes.
  • In order to conceptualize the invention and comprehend the implications of the inventions fully; it is important to prepare a rough set of claims even though it may not be a part of the provisional patent application.

Required documentation

The below-mentioned documents are required:

  1. Form 1 (Application for grant of the patent), THE PATENTS ACT 1970 and THE PATENT RULES, 2003.
  2. F2 or Form 2 (Provisional Specifications)
  3. Form 5 (Declaration of Inventorship)
  4. Form 26 (Power of Attorney) (Required if your form is filed by an agent)
  5. E-filing fees (Patent Statutory Fee)
  6. Form 3 (Corresponding declaration and undertakings concerning foreign patent applications)
  7. Priority Document (For convention applications if the priority date is claimed)
  8. Illustrations/Diagrams of the invention

Components of a Provisional Patent Specification

Information contained in a provisional patent

  • The Invention / Design / Process name / title
  • Provisional requirements
  • Innovation definition
  • Field and intent of innovation

Title

The preliminary requirements for the patent will begin with the title of the invention. The title will reflect the invention ‘s features equally, and be brief and to the point. It will be within 15 terms. The name of the inventors, the term “patent,” the abbreviation “etc.”, terms in specific languages or other terms should not be included in the text.

An example of the TITLE patent is given below.

  • “Guidance system with integrated chain of input ….”
  • “Consisting of segments X, Y, Z; or”

Description

The description will begin with the Preamble and includes the innovation field and object. It starts after the Title, on a fresh page. “Claims” need not be in the Provisional Patent Specification

Preamble

Within a Provisional Patent specification, the description of the innovation starts with the preamble ‘The following specification defines the innovation.’

Field

This section should state the technical field to which the invention belongs. This would be clear to the extent where this is the essence of the product and the application designation is readily detectable. Although considering the area, it should be borne in mind that it in no way ‘limits the scale’ of the invention.

Of starters, the word “liquid pouring device” would be used instead of “juice pouring device,” under this case, the variety will be restricted and beverage, water, etc. will be removed.

Object 

The purpose of having this segment is to show the importance of the invention. The benefits that the invention would offer would be essentially inventive solutions.

The phrases that may be found in this segment are “the key objective of this innovation is …;” “another object of the innovation is ….’

 

Start registering your invention today!

1+

A guide to filing a provisional patent specification in India

15936

First, let us understand the main idea of what is a provisional patent specification.

As per Section 9 of the Indian Patent Act 1970, there are two kinds of patent specifications,

  1. Provisional Patent Specifications
  2. Complete Patent Specifications (Non-Provisional according to USPTO)

A provisional patent specification is the beginning application before filing a usual patent. It describes the invention in a broad perspective but not completely. A provisional patent specification is a document which may be filed before a Complete Patent Specification in the Office of the Controller of Patents pertaining to an outlook patent.

It receives the word “provisional” from being incomplete and a predecessor of a complete specification which comes afterwards. Even though it is not compulsory, it is mainly suggested as it has a lot of advantages for the inventor.

Importance of Filing a Provisional Patent Specification

Prior patent filing date:

After the filing of the Provisional Patent Specification, the inventor is entitled to an earlier filing date. It secures the priority date and has more advantages such as:

  • Alike inventions which are filed after the filing date of the provisional will not get priority before the applicant’s invention.
  • If any dispute occurs regarding ownership of the invention, the Patent Office will take into consideration the provisional patent’s earlier filing date as the date of filing.

Cost-efficient:

The initial cost of a provisional patent specification is comparatively lower than that of a complete patent application which saves a lot of money for the inventor with regard to professional fees.

Moreover, it is technically clear as compared to the complete specification, inexpensive and lesser resources are required to prepare it. A provisional patent specification can also be prepared by the inventor himself/herself.

Time period:

As a precaution, it is essential to have enough time to develop claims in the research industry. When a new invention is created, you are unaware of what basis to claim protection for it. However, there is a processing period of twelve months between the provisional patent specification and complete patent specification. This in-between time can be used for:

    • Researching and analyzing the value of the invention in the market and its commercial viability.
    • Advancing its features and making it a more viable product for the market.

Patent Your Innovation Right Now

 

Pending patent:

After the provisional patent specification has been filed the inventor can officially and legally use the “Patent Pending” or “Patent Applied” tag for their invention. This tag will further be helpful in receiving funds as the authenticity of the invention rises while the main business model is being advanced. It can be used as a great selling point.

Scope of abandonment:

If an inventor goes for a provisional specification and at some point decides that the product created is not commercially viable and chooses not to get a patent, then it can be easily abandoned. Though in a similar situation, if a complete specification would have been done that would have been extremely costly and lots of money would have already been spent on that process.

Secrecy:

Since there is no publication of the patent application, the prioritized data can be maintained by secrecy.

Key points to know while filing a provisional patent specification

As an applicant, the below-mentioned key points should be taken into consideration:

  • The complete patent specification is an official and legal document. It defines the scope of the invention and it is the provisional patent specification upon which the following complete specification and most importantly, the grant of the Patent will be based.
  • If any elements are created from the time duration of 12 months between the provisional patent specification and complete patent specification filing shall not be given a priority date.  Any new invention after the filing process of the provisional patent specification will not be considered and shall not get the benefit of the provisional application.
  • This step to filing the provisional patent specification should be considered as the initial and first step towards the patent registration.
  • If the patent specification is not filed within the time duration of 12 months, then the patent application will be ‘abandoned’.
  • Confidentiality will be maintained after the provisional patent application but it is equally essential for important disclosures to be made since incomplete applications will be disadvantageous for the applicant in the future processes.
  • In order to conceptualize the invention and comprehend the implications of the inventions fully; it is important to prepare a rough set of claims even though it may not be a part of the provisional patent application.

Required documentation

The below-mentioned documents are required:

  1. Form 1 (Application for grant of the patent), THE PATENTS ACT 1970 and THE PATENT RULES, 2003.
  2. F2 or Form 2 (Provisional Specifications)
  3. Form 5 (Declaration of Inventorship)
  4. Form 26 (Power of Attorney) (Required if your form is filed by an agent)
  5. E-filing fees (Patent Statutory Fee)
  6. Form 3 (Corresponding declaration and undertakings concerning foreign patent applications)
  7. Priority Document (For convention applications if the priority date is claimed)
  8. Illustrations/Diagrams of the invention

Components of a Provisional Patent Specification

Information contained in a provisional patent

  • The Invention / Design / Process name / title
  • Provisional requirements
  • Innovation definition
  • Field and intent of innovation

Title

The preliminary requirements for the patent will begin with the title of the invention. The title will reflect the invention ‘s features equally, and be brief and to the point. It will be within 15 terms. The name of the inventors, the term “patent,” the abbreviation “etc.”, terms in specific languages or other terms should not be included in the text.

An example of the TITLE patent is given below.

  • “Guidance system with integrated chain of input ….”
  • “Consisting of segments X, Y, Z; or”

Description

The description will begin with the Preamble and includes the innovation field and object. It starts after the Title, on a fresh page. “Claims” need not be in the Provisional Patent Specification

Preamble

Within a Provisional Patent specification, the description of the innovation starts with the preamble ‘The following specification defines the innovation.’

Field

This section should state the technical field to which the invention belongs. This would be clear to the extent where this is the essence of the product and the application designation is readily detectable. Although considering the area, it should be borne in mind that it in no way ‘limits the scale’ of the invention.

Of starters, the word “liquid pouring device” would be used instead of “juice pouring device,” under this case, the variety will be restricted and beverage, water, etc. will be removed.

Object 

The purpose of having this segment is to show the importance of the invention. The benefits that the invention would offer would be essentially inventive solutions.

The phrases that may be found in this segment are “the key objective of this innovation is …;” “another object of the innovation is ….’

 

Start registering your invention today!

1+

No Record Found
SHARE
Senior Executive - Content in Vakilsearch