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How Important Is It to Hire a Lawyer for a Provisional Patent?

In a provisional specification, an invention simply needs to be disclosed broadly and doesn’t need the claims to be enclosed. It is a simple document that helps the inventor acquire the priority date for the invention.

A Provisional Patent, which is one of the branches of intellectual property, is an invention upon which an exclusive marketing and production right is bestowed. The invention could be a novel product or process that gives an inventive solution for some existing problem. The person intending to secure a patent must disclose the technical information about the invention to the public and in return, receives exclusive marketing rights.

In the life cycle of a patent, the specification documents are the heart and soul of the patent. These are techno-legal documents that disclose the information pertaining to the invention in the form of claims and are submitted along with the patent application. The specifications are of two types:

  •   Provisional Specification
  •   Complete Specification.

While a provisional specification is the general description of the invention and is mainly filed to secure the priority date of the application, a complete specification renders the explanation about the invention particularly and fully.  Although it sounds quite straightforward, in real-time, filing the specifications and securing a patent is a long and cumbersome process. When inventors have a path-breaking idea, good enough to change the world, the first sensible thing to do is to file a patent. Unfortunately, simply googling about the process could throw them into frustration, as the amount of information available is simply overwhelming.

Importance of Provisional Patent:

Filing a patent is more like a race. The one who comes first gets the prize.! Having said that, a provisional specification is the ticket to get to that winning position. Therefore, most inventors are often in a hurry to file the provisional specification, as they want to file it before anyone else could. In a worst-case scenario, if an inventor has an idea and is delaying the filing of the provisional specification, someone else could file a patent on the same lines. This would make the inventor’s product obvious and obsolete and hence would not qualify to get a patent.  Therefore, filing the provisional, at the earliest possible, is of utmost importance. Once the provisional specification is filed and the priority date is obtained, a complete specification that gets into every possible detail of the invention should be filed within12 months from the date of filing the provisional specification.  

Is professional Help Required to File a Patent? 

Now, it’s an established fact that a provisional specification acts as a reservation for the priority date of a patent. The next question is, can inventors go about the drafting and filing of the provisional specification by themselves? There is enormous advice on the internet on how a patent can be filed by the inventors themselves without having to hire a lawyer or a patent agent. In fact, The Patents Act, 1970 does not make it mandatory to hire a patent agent or a lawyer to file a patent. It is very much legal for inventors to file both the provisional and complete specifications by themselves. Honestly, many of the inventors resort to filing their patents without seeking professional help, as it saves them the lawyer’s fee. Also, a provisional specification is far less complicated than a complete specification, and hence the inventors view it just as a document to set the priority date of the invention and hence file by themselves. Unfortunately, this could backfire on the inventors.

Firstly, inventors should be sure if their invention falls within the ambit of patentable subject matter as per the Patents Act, 1970. Talking to a lawyer is of crucial importance at this juncture. Most often, the so-called invention would be requiring a design registration, or copyright or would simply need a trademark and not a patent. If the inventor proceeds to file a provisional specification without much introspection, it would merely result in an unfathomable loss of time and resources thereafter.  Also, the invention has to be clearly demarcated and adequately explained in the provisional specification. No new subject matter can be added to the complete specification. A complete specification is merely an extension of the provisional document. Only an adept patent lawyer would be able to draft the specifications within the boundaries. Under such circumstances a priority date will not be granted based on the provisional specification and the date would be shifted to the date of filing the complete specification.

FILE A PROVISIONAL PATENT NOW

The inventors might argue that they might not need a seasoned lawyer to file a document as simple as a provisional specification. Further, a provisional specification is not examined or even published, until a complete specification is filed. It would only be published after 18 months from the date of priority after the complete specification is filed. But much to the dismay, the inventors have to hire a lawyer for this very fact. The provisional specification which the inventors filed by themselves may not even be novel or inventive. Or, say, it may not even be a patentable subject matter according to the Patent Act, 1970. An ignorant inventor might start to work on such a patent and after 12 months would file a complete specification only to learn that it cannot be patented at all.

Entrusting a patent lawyer with filing the provisional specification would avert this issue. A lawyer would essentially run an exhaustive patent search before filing the provisional to ensure the novelty, non-obviousness, and inventiveness of the invention. Also, the lawyer would be able to verify if the invention is in line with the Act. Although the invention is the idea of the inventor, it is necessary that the inventor collaborates with the lawyer to draft the specification documents. Unless inventors have extensive experience in drafting and filing specifications, they can never outweigh an experienced lawyer in the job. While there are several online resources that claim to teach drafting a provisional patent, a minor mishap in the same could push the inventor into dire consequences.

Therefore, it might be prudent on the part of the inventors to look at the bigger picture. Hoping to save the lawyer’s fee and risking filing a provisional patent by themselves could make them waste more money and resources. What could have turned out to be a path-breaking invention could turn out to be disastrous when the invention is not handled by a professional. Therefore, the best thing for an inventor to do is to convey the invention to a patent lawyer from Vakilsearch to collaborate efficiently.

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