Introduction:
Intellectual Property Law in India has evolved in numerous ways possible by incorporating different methods to facilitate and protect the rights of Intellectual Property owners. The pandemic has slowed down these trends with having to push back the dates, deadlines, etc.
Intellectual Property Law in simple terms means, a set of rules which protects human ingenuity. In India, Intellectual Property Rights in the form of patents are protected under the Patents Act of 1970.[1] Patent registration helps a creator, inventor, or company to protect their intellectual property from getting copied and gives them exclusive rights to protect them in case of infringement. It can be looked at as a preventive tool that helps to protect human ingenuity.
Section 9[2] of the Patents Act of 1970 specifies two types of patent categories:-
- Complete patent specification; and
- Provisional patent specification.
History of Provisional Patent Specifications
The United States Patent and Trademark Office (USPTO) is the federal agency that looks after all the patent registrations in the United States. Although there is no such thing as provisional patents. The USPTO started offering inventors the option for filing provisional patents on June 8, 1995.[3] In India, inventors were granted to file provisional patents even before the United States. In 1945, an amendment of the Indian Patents and Design act[4] paved the way which provided inventors to file for a provisional specification and following the submission of complete specifications within nine months. Moreover, there were many amendments to the said act, but the Government of India introduced a new Patents Act in 1970 which incorporated the said part on the filing of provisional patents.[5]
What Actually is a Provisional Patent Specification?
A provisional patent specification is required to give only the essential aspect of the novelty requirement and the inventive aspect of the invention in an abridged form and this would not contain the claims. It is simply understood as a preliminary step and helps the inventor to obtain some protection before he/she can file the final complete patent document, as to receive the latter, one has to have details regarding the design and specification of the invention.
Although provisional patent registration is not considered mandatory by any means, it helps the patentee in a prior stage if the invention is not completed yet. The important thing to keep in mind is that even though a patentee might register for a provisional patent, this doesn’t necessarily mean that the patent will itself get mature and the patentee doesn’t have to fill for a complete patent specification.
Provisional patents are registered because it:
- Helps protect the invention in an early stage
- Helps protect the novelty factor of the invention
- works as a preventive measure
Advantages of Filing a Provisional Patent Registration
- Filing a provisional patent acts as a deterrent and alike inventions will not be prioritized after the patentee has filed for a provisional patent application.
- It is considered to be cost-effective as applying for provisional patent registration is inexpensive and considerably lesser resources are required for the patentee to prepare it.
- The 12 month period between a provisional and complete patent registration is considered enough and helpful to complete the required and pending research work for the innovation.
- The patent filing date is considered important as if the patentee has filed for a provisional patent then that date of filing will be considered and any filings after that for other patents will be considered void. So registering for provisional patents helps to shield one’s innovation.
- After registering for a provisional patent, the patentee can use the “Patent pending” tag on a legal basis thereafter.
Documents Required to File a Provisional Patent Registration
The documents which are considered mandatory to file a provisional or initial stage of patent registration are:
Form 1 (Application for Grant of the Patent)
This application is considered to be a patent registration application. This application is a mandatory document that has to be filed and submitted within a period of 6 months of the filing of the final document. An applicant has to fill all the relevant fields in the form as per the directions given in the document.
Form 2 (Provisional or Complete Specifications)
This is the form where one has to file for a provisional patent specification.
Form 3
As per Section 8 of the patents act of 1970,[6] this application should only be filled if there is a foreign patent application.
Form 5
This form is where an investor has to sign the declaration, also known as a declaration of inventorship
Form 26
This form is required if a patent application is filled by a patent agent. This document has to be submitted within six months of an application filing.[7]
Form-28
This form is to be submitted by a small entity/startup (only if required). – Submission of the drawing/illustration/design of the invention (not required in the case of a process) – E-filing fee.[8]
All the above-mentioned forms can be directly downloaded through the official website on the patent office, government of India website.
Procedure
One should apply for a patent registration with a proper prior understanding or knowledge regarding the procedure of patent registration. The procedure one should follow to apply for patent registration are:-
Step 1
One should do a patent search to check and compare the novelty and nonobvious elements of the invention before filing for a patent application. It helps the inventor to know if any similar patent filings have been done prior, which might further help the inventor in extending the scope of the innovation which then can be distinctive from other prior patent filings. One can make a public search on the official Indian government patent site.
Step 2
The next step is preparing a Patent report. After doing some research and inspection the patentee if, eligible then should assign or authorize a patent agent or attorney to do further research regarding the preparation of the patent report.
Step 3
The next step is registering for a provisional patent specification. This is helpful and gives exclusive rights by acting as a deterrent effect, by further protecting the patentee’s innovation. This can be registered via Form 2 issued from the patent office in India.
Step 4
The next step is regarding a final application. Once the patentee’s invention is complete, the inventor then can apply for a final patent registration via Form 1. This has to be filed within 12 months of filing a provisional patent registration, or else the form shall be abandoned.
Step 5
The final application which was filed by the patentee will get published in the official patent journal after 18 months of applying.[9]
Step 6
Whether the patentee has filed for a provisional application or a final application, one should submit a formal application for patent examination within 48 months, else the application is withdrawn. Patent objections are a common phenomenon that happens after examination of the patent by the controller due to some vague or ambiguous elements in your patent application, i.e., unclear claims, etc.
Step 7
Finally, the patent is granted if all the requirements are fulfilled and objections are properly responded to.
Conclusion
Filing for an early patent registration on a provisional basis is a good strategy every patentee should incorporate. If filed properly this can help achieve exclusive rights for the patent one has filed for and also provides for an ample amount of time for an innovation to complete its development, research, and pending stage and to draft the complete specifications for the final patent registration. This also helps in solving any future disputes that may arise in regards to the ownership of the invention.
References:
[1] Patents Act, (1970).
[2] Patents Act, S.9, (1970).
[3] Gene Quinn, provisional patents: what are they and why do you need them, ipwatchdog, (July. 31, 2021, 8:00 PM), https://www.ipwatchdog.com/2016/08/13/what-are-provisional-patents/id=71882/.
[4] Indian Patents and Design (Amendment) Act, (1945).
[5] History of Indian Patent System, ipindia, (July. 31, 2021, 9:00 PM), https://ipindia.gov.in/history-of-indian-patent-system.htm.
[6] Patents Act, S.8, (1970).
[7] Provisional Patent – Advantages, How to file for Provisional Patent, clear tax, (July. 23, 2021, 8:00 PM), https://cleartax.in/s/provisional-patent.
[8] ibid.
[9] Savvy Midha, Detailed process of patent registration in India, Corpbiz (July. 23, 2021, 9:00 PM), https://corpbiz.io/learning/process-of-patent-registration-india/.
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