Why you need to file a provisional patent application ?

How to prepare for patent agent exam in India
Provisional patent application, Non-provisional patent application, non provisional application
Provisional and non-provisional patent application

A provisional patent application in India is generally used to secure an early priority date for an invention. The main advantage of filing a provisional patent application over a non provisional patent application is that an applicant (or inventor) need not spend extensive time and money on drafting it and getting it filed. As an applicant, you can just describe your invention’s subject matter into a readable format and file it promptly. There are no hard and fast rules to how the provisional application should be written unlike it’s more extensive partner, a non-provisional patent application (or complete specification). 

Patent law in India and across many jurisdictions allows this facility so that patent applicants do not loose out on getting an early priority date by getting confused in the intricacies of writing a non-provisional patent application. Post filing the provisional application and securing a priority date, an applicant needs to mandatorily file a non-provisional patent application (complete specification) within 1 year from the date of filing the provisional application. The non-provisional patent application is a more extensive and complete version of the earlier filed provisional application.   

Let’s look at some of the advantages of filing a provisional application:

1. Delays extensive cost of filing patent application  –

A provisional filing costs substantially less compared to a non-provisional patent filing in India. For example, if an individual inventor wants to file a provisional patent application in India, he merely needs to pay Rs. 1600 (there is no fee for examination and/or early publication that needs to paid at this stage). This means that the applicant can secure priority for their invention at a very low cost by filing the provisional application and gather additional funds in the succeeding 1 year to pursue a complete patent application.

Even if the applicant does not want to purse the non-provisional patent application later for business reasons, the investment risk is just the cost of provisional application (compared to higher costs if a non-provisional patent application had been filed without filing a provisional application). 

In fact, several inventors who intend to publish research papers having patentable subject matter, file a provisional patent application before such a publication, with almost similar content in order to secure a priority date before they publish the subject matter in the research paper. Depending on their future business plans on the subject matter, they decide whether to pursue it by filing a non-provisional patent application or abandon it.     

2. No stringent content/formatting requirements

As we discussed above, a provisional application does not really need any specific structure or format like a non-provisional application. At a very basic level, the provisional application can simply include an elaborate description of how the invention works. It’s not necessary to divide it into several sections and sub-sections like a non-provisional application and comply with specific legal requirements of each section. 

It is also not mandatory to include any drawings but is recommended to include drawings for a better explanation of the invention and for a more efficient protection on the subject matter. An applicant can even include high-level sketches that need not be granularly defined to save time. The drawings can be refined later while filing the non-provisional patent application.         

3. No claims required –

 The provisional application as such is never examined by the Examiners at Indian Patent Office. You can imagine a provisional specification to be a placeholder for an upcoming improved version of your patent application – the non-provisional application. Since the application is never examined, the Examiners do not get to review the claims. Therefore, claims need not be included in the provisional application.     

 A skilled patent draftsman would agree that the most important section of a patent is claims and unless an inventor is a patent ninja, writing independent and dependent claims typically requires professional help. This consumes time, effort and money. Filing a provisional application saves this cost and effort because claims are not required.  

4. Invention need not be completely developed –

 This part is a bit subjective and depends on the patent strategy of the applicant. However, in scenarios where the invention is not completely developed but a broad-level working of the invention can be described, an inventor can still go for a provisional filing. In fast-paced technology domains (e.g. Artificial Intelligence or Machine Learning applications), securing an early priority date on even the high-level concept of the invention can give inventors an edge over competition or over potential prior art that may be discovered later during patent prosecution.

Inventors can use the succeeding 1 year to better develop the invention and capture the developments in the non-provisional patent application. 

However, inventors need to exercise caution here. The subject matter is protected from the date on which it was first disclosed. If the provisional application discloses features A+B while the non-provisional application discloses features A+B+C, feature C gets protection from the date of filing the non-provisional application while features A and B get protection from the date of filing of the provisional application. This means that even if the invention is not fully developed, it’s still makes sense to include as much patentable subject matter as possible in the provisional application to seek priority on maximum subject matter

Having discussed the above points, it’s finally recommended to get a quick preliminary search done to ascertain the uniqueness of the invention even before filing the provisional application. This helps optimize the subject matter on which the early priority is sought. 

Hope you liked reading the above article. Do comment below if you have any questions or comments. 

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