Provisional and complete specifications is one of the most fundamental concepts in patents. Even in the international patent regime, this is a well-recognised system for identifying priority of a patent application. Section 9 of Indian Patent Act, 1970 covers multiple scenarios on filing a complete specification after filing a provisional specification.
If you have read the above-hyperlinked articles, this article would further advance the understanding of provisional and complete specifications in the Indian context.
Section 9(1) of Patent Act: Timeline of provisional and complete specifications
Section 9 (1) of the Indian Patent Act reads as follows:
“1) Where an application, for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.”
Explanation of section 9(1):
If a provisional specification is filed in India, a complete specification must be filed within 12 months from filing the provisional specification.
Consequences of not filing a complete specification:
If the complete specification is not filed within the 12-month period, the application for grant of patent (i.e. provisional specification) is abandoned on expiry of the 12-month period.
Section 9(2) of Patent Act: Cognate provisional applications
Section 9 (2) of the Indian Patent Act reads as follows:
“2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.
Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.”
Explanation of section 9(2):
This sub-section deals with filing of multiple provisional specifications are cognate (i.e., related) or one provisional specification is a modification of each other. This scenario is generally followed by applicants where a product is in development stages and the applicant files two or more successive provisional applications to protect incremental improvements in the product.
As per section 9(2), if the Controller is convinced that the subject matter in all such provisional specifications can be covered in a single complete specification, the Controller can allow the applicant to file only one complete specification pursuant to all the provisional specifications. The prerequisite is that the complete specification should be filed within 12 months from the earliest provisional specification (i.e. first provisional specification).
This may be cost-effective for the applicant because the applicant need not pay a separate examination fee for separate complete specifications, which would have been filed otherwise.
Section 9(3) of Patent Act: Conversion of complete to provisional application
Section 9 (3) of the Indian Patent Act reads as follows:
“(3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treatydesignating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.”
Explanation of section 9(3):
This section allows an applicant to convert a complete specification (e.g. a non-provisional application NP1) filed in India to a provisional specification (e.g. P1) if this request is made within 12 months from filing the complete specification (NP1).
However, it is logical from section 9(1) that this newly converted provisional specification (P1) must be supplemented later by filing a complete specification within 12 months of the date of filing of the provisional specification (which is in fact the filing date of NP1).
Section 9(4) of Patent Act: Postdating of provisional specification
Section 9 (4) of the Indian Patent Act reads as follows:
“(4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.”
Explanation of section 9(4):
If both a provisional specification and complete specification have been already filed, the Applicant can request the Controller to cancel the provisional specification and post-date the application to the date of filing of the complete specification. This request needs to made anytime before the grant of the patent.
The advantage here is that the applicant can extend (technically ‘shift’) the patent term but postdating also introduces an additional risk of discovering prior arts that were published between the filing date of provisional specification and the filing date of complete specification.
What is the fee required to file a provisional and complete specification?
If the applicant is a natural person (individual inventor), a startup or a small entity, the fee is Rs. 1600. If the applicant is other than these entities (e.g. a large entity), the fee is Rs. 8000. This fee is applicable up to 30 A4 sheets of specification and up to 10 claims.
For every additional sheet, there is an additional fee of Rs 160 and for every additional claim, there is addition fee of Rs. 320 that is applicable for natural persons, startups or small entities. For other entities, these fees are Rs 800 and 1600, respectively per additional sheet and per additional claim.
What are the forms required to file a provisional and complete specification?
Form 1 is required to make an application for grant of patent and form 2 is required to describe the specification.
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