Know When to File Provisional and Complete Patent Application
- August 24, 2020
- Posted by: Patntech
- Category: Patents
A good invention is a creation of the mind, rare and an intangible asset; then why not protect it? A patent is an exclusive right granted for an invention (product or a process) that provides a new way of doing something or offers a new technical solution to a problem. Patent gives an inventor the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an enabling public disclosure of the invention.
One can file a patent application as:
1. Complete specification/Non-provisional patent application; or
2. Provisional patent application followed by complete specification /non-provisional patent application.
Complete Specification/Non-Provisional Patent application:
A complete specification or non-provisional patent application is a regular patent application which is examined, prosecuted, accepted and granted by the patent office. The complete specification encompasses the full and sufficient disclosure of the invention along with the best mode of working of the invention. Complete specification must include claims defining a boundary of the patent. The legal rights in a patent depend on what is claimed in the claims with proper support from specification.
Complete specification is generally filed when the invention is in the final stage or complete and there are no further experiments and research required on the invention. Complete specification must disclose the invention in sufficient detail for a person skilled in the art to carry out that claimed invention. Failure to disclose sufficient details in the complete specification may lead to rejection of the patent application by patent examiner or may pose a threat of invalidation or revocation from a third party.
Contents of complete specification:
- Title of Invention
- Field of Invention
- Brief Summary of Invention
- Brief description of drawings
- Detailed Description of invention
- Examples, if any
- Specific embodiments, if any
Documents required for filing a complete specification in India:
1. Application for Grant of Patent
2. Complete Specification
3. Statement and Undertaking
4. Power of Attorney
5. Declaration of Inventorship
6. Request for Examination
7. Requisite Statutory fees
Provisional Patent application:
A provisional patent application is a legal document filed before Patent Office to establish an early filing date. Provisional patent application does not mature into an issued patent unless the applicant files a regular complete specification within 12 months from the date of filing the provisional patent application. Provisional patent application provides a priority date for the invention and indicates an intention of the inventor/applicant to file a complete specification within 12 months from the date of filing the provisional patent application. If the provisional patent application is filed, then the complete patent application that follows will claim a priority date from the provisional patent application. If the inventor fails to file the complete patent application within 12 months from the date of filing the provisional patent application, then the provisional patent application will be considered as abandoned. In other words, the inventor loses the right to claim priority date from the provisional patent application to file a complete patent application.
Provisional patent application is generally filed when the invention is at an early stage of development and requires further research to fully develop into a complete product or process. Inventor can file the provisional patent application, and then use 12 months’ time to further develop the invention and file a complete specification within 12 months from the date of filing the provisional patent application. Provisional patent application can be filed with fewer details when compared to complete specification.
Contents of provisional specification:
1. Field of invention
2. Background of the invention
3. Object of the invention
4. Statement of the invention
Key points of provisional application:
- There are only a few requirements like simple description for filing the provisional application.
- Claims are not required.
- Priority date is reserved.
- Scope to continue Research and development (R&D)
- A protection from other people from stealing your ideas and invention even when the idea is still at a nascent or early stage.
- Provides 12 months’ time to test the commercial potential of the invention and the market viability.
- Provisional application not examined by patent office.
- When all the above does not feel worth, provisional patent application can be easily abandoned, saving the costs.
- Provisional specification shall provide adequate details to properly disclose the subject matter of the invention. Complete specification must have same subject matter to that of the provisional specification. Inadequate disclosure of the invention in the provisional specification shall be avoided.
Final thoughts, when the invention is at an initial stage of the development, it is advisable to file a provisional application and reserve the priority date. Thereafter, take 12 months’ time advantage to develop the product or process and file complete specification. If the invention is complete, then file the complete patent application directly.Author: Clement Ranjan Prabhu