Intellectual PropertyPatents

Can a Provisional Patent be Rejected?

A provisional patent is one that is filed at the earlier stages of an invention to obtain the priority date. It does not contain the claims or the complete details of the invention and merely determines the scope of the invention at a superficial level.

A patent’s success not only depends on how unique and novel the product or process is, but also is dependent on how brilliantly the specification documents are drafted. The Patent Act, 1970 puts forth 2 types of patent specifications namely the provisional specification and the complete specification.

The role of the documents can very well be deduced from their names. The provisional specification is the preliminary document that is submitted by the inventor, to obtain the priority date of the invention.

This is the main role of the provisional specification. By filing the provisional patent application, the inventor can attach the “patent-pending” tag to the products and begin the marketing without having to wait for the patent itself.  

The complete specification has to be filed within 12 months from the date of filing the provisional specification. While the provisional specification outlines the details of the invention broadly, the complete specification, as the name suggests, gives the entire details about the specification, including the background of the invention, its various embodiments, the best method to perform the invention, and most importantly the claims the inventor makes pertaining to the exclusivity of the invention.

File a Provisional Patent

Contents of a Provisional Patent Application

The provisional specification is submitted at the earliest possible, once the inventor is struck with an innovative path-breaking idea. It might take weeks, if not months, together to materialize an idea.

But waiting to formulate an idea completely and then filing a non-provisional or a complete specification, can cause undue delay and might lead to the inventor losing out on the priority date. Hence filing a provisional specification would be an intelligible move for an inventor.

Since a provisional specification is filed at a very primitive stage, the specification cannot be expected to be exhaustive. A provisional specification essentially contains the following components:

  • The title of the invention (It has to be mentioned whether it is a product or a process or a method)
  • The preamble of the invention (the preamble starts with the words ‘The following specification describes/mentions the invention)
  • The description of the invention, wherein the field, the background, and the object of the invention are stated
  • Claims may or may not be a part of the provisional specification and are usually reserved for the complete specification.

Examination of the Provisional Specification

Once the specification documents are submitted at the stipulated time intervals, the patent office examines the application. This is to verify if the patent can be granted or not.

The specification is checked to find out if the invention possesses the basic requirements of novelty, uniqueness, and industrial utility. Further, it should not fall within the ambit of objectionable inventions as enlisted in the Patents Act, 1970.

The applicant has to file for the patent application to be examined through Form 18 within 48 months from the priority date. If the inventor fails to file the request from examination, the application will be deemed to be withdrawn. The applicant can also make a request for expedited examination through Form 18A.

Having said that, an examination of a patent application is an elaborate and exhaustive process. In order to examine if a patent can be granted the specification should be examined end-to-end. For this very reason, a provisional specification is not examined, for it does not comprise the details of the entire invention.

It is the practice to examine the complete specification and a patent is granted based on the content of the complete specification.

The complete specification is therefore the actual patent application. On the other hand, if there should be any discrepancies, the patent is prosecuted or invalidated based on the details mentioned in the complete specification again.

It is in fact true that the provisional specification is never considered a “provisional patent” as no such thing exists in reality. The main purpose of a provisional specification is to merely fix the priority date of the invention.

Due to the limited information it holds, and not to forget the fact that a much more detailed disclosure of the invention is filed in the complete specification, the provisional specification is never really examined by the patent office. It is merely verified to check if it meets the basic filing requirements.

Can a Provisional Patent Application be Rejected?

A provisional patent application most often does not have the claims and hence cannot be rejected on a strict basis. A patent application has to be examined in the first place to either grant or reject the patent.

A provisional application does not have the entire content of the invention to be examined and hence cannot be rejected nor can a patent be granted barely on the basis of the provisional specification. A provisional specification is therefore a placeholder that gets the priority date for the invention.

It is for this purpose that many seasoned attorneys and inventors skip the provisional patent application and go ahead directly to file the complete specification. One may wonder about the fate of poorly drafted provisional specifications.

It simply does not serve its purpose and it can be used against the inventor in the prosecution stage to state that the inventor never had a real product at hand and that the invention never had materialized to the stage of a working model.

Conclusion:-

Therefore, regardless of whether a provisional patent application can be rejected or not, it is of utmost importance that it needs to be drafted as meticulously as possible.

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