Consider a scenario where you want to file a patent on an idea that is still at a developing stage and is detailed enough to be disclosed on paper but the final working protocol is not ready yet, in such conditions it is very important to secure the filing date, especially in India as the Indian Patent office follows first to file system. Now, the important question that you may have is – how do you block the priority date? The answer is, by filing something called provisional application with the Indian Patent Office.
As the name clearly suggests, provisional application is not complete, but neither is it a rough document, it is the document which describes the scope of the invention and the field of the invention in a broad manner. Once you are ready with the working prototype of the invention, you may file a complete application anytime within 12 months from the first filing date i.e., from the date of filing of the provisional application. If the complete application is not filed within 12 months from the filing date of provisional application, the patent application is deemed to have been abandoned. Further, upon filing the complete application, the application will be published within 18 months from the first filing date and thereafter the invention is in the public domain i.e., it is accessible to general public. To check the application status of any published patent application you may log into Indian Intellectual property website with the given link.
Again, filing a provisional application is Not Mandatory as you have the option of filing complete application directly, but it is highly recommended, as in addition to blocking of filing date, there are multiple advantages of filing provisional application according to which one may:
Postpone the Cost:
By filing provisional application, one can save on the initial investment and postpone the cost until 12 months, as the preparing of provisional application is much cheaper when compared to that of complete application.
Use ‘Patent Pending’ Status:
Though provisional application is not a final document to apply for patent grant, you can officially announce that your invention has “Patent Pending” status upon filing the provisional patent application and thereof you need not worry about confidentiality when marketing or disclosing your invention to any investors, friends or anybody.
Filing a provisional application will buy you enough time to negotiate with the investors and generate funds that is required to carry out further procedures of filing and also to commercialize the invention.
Let Invention Evolve:
Filing a provisional patent application at a very early stage of developing may give the invention enough time to evolve, test the practical challenges of building and test the potential market of the invention. Potential market testing may involve finding clients who are interested in licensing the invention, understanding the market worth of the invention and the like. Before filing a complete application, the inventor can have a clear idea on the potential of the invention as filing provisional patent application buys the inventor/s 12 months to decide whether to proceed with the invention or not.
Withdraw the Application:
By filing provisional application, you always have an option of withdrawing the application. If for any reason you do not want to go ahead with the complete specification filing, it is less complicated to withdraw a provisional application and you may re-file the same application whenever it is convenient to you. As the provisional specification doesn’t get published, the confidentiality of the application continues to be maintained and that helps you in re-filing the same application again even after withdrawing. Otherwise, in your basic research, if you find out the invention is not worth filing or doesn’t have a potential market, you abandon/withdraw the application and that saves you huge amount of money, time and effort.
There is another hitch when it comes to commercializing a patent. Let us assume you filed a provisional application and within 12 months you filed complete application and you got the examination of the application done and finally you got the patent grant. Now, just because you own an invention, it doesn’t guarantee that you are free to commercialize it!!! Sounds weird, doesn’t it!? Yes, in order to commercialize your invention, you should make sure you are not infringing on any active patents in that particular geographic area where you are planning to commercialize the invention. To make sure you are not infringing on any active patents you should get Freedom to Operate done by an IP professional.
Things you should be aware of before applying for a Provisional Application
Before you file a provisional application, make sure you have a detailed description on the overall scope and working of the invention. It is very important to keep the invention scope broad in the provisional application and to add multiple modes of working of an invention so that once the invention is fully developed, you may pick and choose the best working mode/method while filing complete application. Also, it is easier to narrow the scope of the invention at the complete application stage, but if you keep the scope narrow at provisional stage, it is very tricky to broaden the scope later on.
As important as it sounds, Drafting of a provisional application is a critical part of the whole process. Though you may draft and file your own application, it is highly recommended to get it done by a Patent professional, that way you are ensured that you are provided with the right perspectives and approach that your invention needs towards its protection and have control on multiple things that might go wrong. For professional assistance with respect to drafting and filing patent application, you can contact us.