Filing Provisional Patent Application in India – Checklist

Filing Provisional Patent Application in India – The patent offices in India are working their best on to making the patent process simple and user-friendly. In attempt to do, Indian Patent Office (IPO) allow an inventor to file provisional patent application.  When an invention has substantially reached a stage where it fulfills the criteria of novelty, non-obviousness and industrial applicability and is in the final stage of completion, at that stage provisional specification can be filed. By doing so, the applicant obtains a priority date to any other application working on the same or similar invention. Additionally, the inventor gets 12months to complete the invention and file a complete specification.

It is an independent and permanent techno-legal document which does not allow any amendments upon filing.

Contents of a provisional specification:

  1. Title
  2. Written description
  3. Field and background of the invention
  4. Object and statement of the invention

Lists of documents that are required to file a provisional patent application in India are:

  1. Form 1 (Application for grant of patent)
  2. Form 2 (Provisional Specifications)
  3. Abstract of the Invention.
  4. Form 5 (Declaration of Inventorship)
  5. Form 26 (Power of Attorney). If your patent is filed by a Patent Agent then this form is necessary, otherwise not.
  6. E-filing fees (Patent Statutory fee) (Electronic Payment)
  7. Form 3 (Corresponding foreign patent application statement and undertakings)
  8. Priority Document (This is used for convention applications if priority date is claimed)
  9. Illustrations / Drawings of the invention.

Advantages

  1. Provides sufficient time to assess and evaluate the market
  2. It is not mandatory to file a provisional application. Therefore, one can file an application with complete specification directly.
  3. If any substantial changes have not been made to the invention, the applicant can use the same provisional specification as complete specification.
  4. 12 months’ time duration to file complete specification
  5. The cost of the form is relatively less than complete specification.
  6. The applicant after filing the provisional application can use the term of Patent pending insofar.
  7. Secures priority date

Disadvantages

  1. In case, the complete specification is not filed within 12 months, the patent is abandoned. It implies that the applicant has lost the option of priority date.
  2. Also, the content and subject matter of the provisional and complete specification must be substantially similar.

Point to remember:-

  1. You cannot obtain a patent on the basis of provisional specification.
  2. Complete specification must be filed within 12 months.
  3. Provisional application defines the scope of the invention. Any development outside the scope of the invention as described in the provisional will not have advantage.
  4. Complete specification does not replace provisional specification.
  5. The language of the scope must describe the elements of the invention in broader terms.
  6. Avoid using terms as “must have”, “consists”, “essential” and etc.

 

To learn more, how Your Patent Team can help you to file your patent application for your invention in India, please visit our website https://yourpatentteam.com