It is a common dilemma while filing a patent application is to whether opt for provisional application or complete (non-provisional) application. In order to decide which option to choose, it is important to understand the present scenario of the patent application filer.
In a provisional application, only the gist of the idea with certain features of the invention is required to be disclosed and may not necessarily include the claims. In other words, the crux of the invention is required to be captured in the provisional specification. It is followed by a complete application giving details of the invention including the claims within 12 months of filing of provisional. It is imperative to note that the complete specification thereafter filed should be within the scope of the invention as disclosed in the provisional specification.
The complete specification includes the detailed disclosure of the invention with claim(s) which in fact establishes the legal boundary of the invention. The complete specification is required to be drafted in such a way that a person skilled in the art is able to replicate the invention after reading the detailed disclosure of the complete specification. The complete application as mentioned above may be filed within 12 months of filing the provisional application(s) or may be filed directly in the first place.
The reason for opting either filing a provisional application or a complete application is “TIME” and “DISCLOSURE”.
| Particulars | Time | Disclosure | Next step |
| Provisional application | As soon as possible when idea takes the shape | Entire scope of invention | Filing Complete application and filing abroad within 12 months |
| Complete application | When the invention is finally developed Or Within 12 months of filing date of provisional application | Complete disclosure of invention along with claims | Filing convention applications /PCT application abroad within 12 months (of provisional application) |
For an instance in the present lockdown scenario, the applicant may not be able to provide or gather complete disclosure of the invention.So, in order to safeguard the rights of the applicant, in this scenario the provisional application may be opted.
In other instance, the applicant may be launching a product or presenting the idea with potential investors and needs the cover priority date protection as a last minute decision. There may be an instance where the applicant simply needs more time to realise the idea completely. In all such instances, the provisional application may be opted.
In another instance, if two provisional specifications are filed and are cognate or if one is a modification of the other, then one complete specification may be filed covering both the provisional applications. Such a complete specification shall have to be filed within twelve months from the date of filing of the first provisional application.
On the other hand, for instance if the applicant is ready with the complete details of the invention, then complete application may be opted. Therefore, in this case application filing stage is complete and unlike provisional application, another application is not required to be filed.
To conclude, in India the Patent rights are granted for an invention which satisfies the patentability criteria i.e. novelty, inventive step and industrial applicability. It is also important to note that the right is given to the first filer. Therefore, in case, any dispute arises regarding the ownership of the invention, the Patent Office will accept the application with earlier filing date.Hence, the applicant may choose to opt for provisional or complete application depending upon the time and disclosure of the invention available at that instance to ensure safeguarding its rights.
Article by Sanjeeta Das.