For easing the mode of filing a patent and claiming the subject matter contained therein, there are two basic approaches, namely provisional patent application and complete patent application. It is a crucial choice to opt for the filing of a provisional patent application or not since a provisional patent application is optional while a complete specification filing is mandatory. Such a decision will be influenced by the nature of the enterprise, its goals and objectives, the capital held by it, and the willingness to undertake unforeseeable risks. Where it is a public sector entity, like a government initiative or a university, there is often the pressure of publishing and disseminating information at the earliest; whereas the private sector is usually free of such challenges, and major consideration is laid on the nature and value of the researched object or invention. The choice can be made by weighing the merits and demerits of taking such a course of action, as has also been discussed herein to enable such decision-making.
What is a Provisional Patent Application?
Usually, the inventor is under constant fear of leakage of information relating to the invention as a certain disclosure has to be made to the manufacturer. It is for this reason that inventors prefer signing a binding Non-Disclosure Agreement (NDA). Another preferable step could be the filing of a provisional patent application. The Paris Convention for the Protection of Industrial Property provided that a foreign inventor shall have a year after the first foreign filing to file a patent in another jurisdiction.
A Provisional Patent Application (PPA) is usually filed when the invention has reached a stage where it can be disclosed in writing by making an application. Full disclosure of information within the claims doesn’t need to be made since the aim is not to establish the entire working of the invention; instead, it is only to claim the priority date.
Once the application is made, it needs to be followed by an application of complete specification within twelve months from the filing date of the provisional application. It is vital to know that there is nothing of the sort of a provisional patent or a complete patent. These are only the application procedures for obtaining a formal patent.
A few points, as mentioned below, should be taken into account at the time of filing a provisional application.
- For filing a provisional application, not all information has to be included. The information, which adequately defines the scope of the invention, would suffice. It should be the information on which the complete specification is premised.
- Once a provisional application is made, the patent is not automatically granted. Therefore, a careful track of the timeline should be maintained in furtherance of making a complete disclosure of all claims. Where a complete application is not filed after the end of twelve months, the application for the invention is deemed lapsed.
- Where there is a new element added in the invention, which enhances the scope of the invention during the period between the priority date and the date of filing the complete application, the reserved priority date will not apply for the said invention.
- The content disclosed within the provisional application is kept confidential until the complete disclosure is made. Even if the complete disclosure is not made, the same is not disclosed to the public, maintaining the secrecy of the invention.
- Where the disclosure is made to any third party, including a legal counsel, the inventor needs to consider preparing a non-disclosure agreement.
Why Should an Inventor File a Provisional Patent Application?
The following are a few reasons that explain why filing a provisional application may be beneficial to the inventor:
- Extension of the Term of Patent: As has been established through International Treaties and Agreements (for instance, the Paris Convention and the TRIPS Agreement), the ordinary life of a patent is 20 years from the date of filing. However, where such a provisional request is made, the term of a statutory patent can be extended up to one additional year. It may be beneficial for the inventor, especially in the field of pharmaceutical or chemical patents, since the value of the patent usually shoots up during the period when the term is about to end due to consumer demand and maturity of the product being marketed. The same would mean securing billions’ worth of cash.
- Productive Timeline: The filing of a provisional application gives the inventor an early filing date under which he has one entire year to contribute towards the development of the product, including its marketing, advertising, securing capital from investors, etc. This additional period can be utilized to plan the introduction of the invention in the market or against any opposition that is anticipated.
- Earlier Priority Date: Even though the invention disclosed has not matured or turned out to be workable, an earlier date could be reserved. Therefore, when the complete specification is filed within 12 months of filing the provisional application, the date of application for claiming the invention will be the date on which the provisional application was registered. It helps to temporarily eliminate any competitors in the same field of the invention being claimed.
- Cost of Filing: The cost of filing a provisional application is lower than that of a complete specification application. Therefore, where it is crucial to reserve the invention and safeguard it from imitation before receiving formal approval, filing a provisional application should be preferred as it is economically viable.
- Creation of Constructive Reduction to Practice: Where such an application is filed, it not only creates a record of prior art but also has the effect of introducing a ‘reduction to practice’ concerning the invention. Reduction to practice occurs when an inventor converts the idea into an operative form, capable of being recreated by other people skilled in the art. It, therefore, has the effect of generating a legal presumption that the invention has been reduced to practice since the date of filing itself.
What are the Demerits of Filing a Provisional Application?
There are many advantages of pursuing a provisional application before filing a complete specification. However, there are a few disadvantages as well, which an inventor needs to be aware of, a few of which are mentioned below:
- Increased Cost of Filing: It is worth noting that there are other costs associated with filing a provisional application, including the cost of preparing the requisite documents and hiring an attorney. Therefore, the use of provisional applications will always cost more than the filing of a non-provisional application.
- Risk of Prosecution Estoppel: These days, the risk of prosecution history estoppel has increased, specifically where multiple provisional applications are made. Due to such a risk, the defendants in a Patent Infringement suit can preclude the proprietor of the patent from arguing a construction of a claim that would ‘retrieve’ the subject matter surrendered during the prosecution of the patent. Therefore, once the proprietor negates a claim, he cannot include it later as he is estopped from overstepping his claims, which were narrowed later.
- Loss of Trade Secret: The disclosure of the invention, if made too explicit, may lead to the disclosure of too much information, which may contain the trade-secret or know-how of achieving the desired result. This is because the applicant has to submit an enabling description that enlists the best mode of performing the invention, and it may result in disclosure of more than what may be necessary at a much early stage of development.
Conclusion
A provisional application has many benefits; however, it also has adjoining disadvantages for both domestic and foreign applicants. The scale of merits and demerits depends on the nature and value of the invention as well as the aims, needs, and objectives of the entity supporting the development of the invention. Therefore, it is necessary to take into consideration all the previously-mentioned factors while making subjective interpretations of each of them to arrive at the best possible strategy for filing a patent application. ✅ For more visit: https://www.kashishipr.com/
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