Provisional Patent Application Filing

A Patent is a statutory right for an invention granted for a limited period of time to the patented by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.

The term of every patent granted is 20 years from the date of filing of application. However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.

The patent system in India is governed by the Patents Act, 1970 (No.39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003. The Patent Rules are regularly amended in consonance with the changing environment, most recent being in 2016.

No. Patent protection is a territorial right and therefore it is effective only within the territory of India. There is no concept of global patent. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries or under PCT, within or before expiry of twelve months from the filing date in India. Patents should be obtained in each country where the applicant requires protection of his invention.

An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patent-able under sections 3 and 4 of the Act.

An invention is patentable subject matter if it meets the following criteria –

• It should be novel.
• It should have inventive step or it must be non-obvious
• It should be capable of Industrial application.
• It should not attract the provisions of section 3 and 4 of the Patents Act 1970.

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations:

1) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;

 2) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human , animal or plant life or health or to the environment;

3) the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

4) the mere discovery of a new form of a known substance which does not result in enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regards to efficacy;

5) a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

6) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

7) a method of agriculture or horticulture;

8) any process for medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

9) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

 10) a mathematical or business method or a computer program per se or algorithms;

11) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

12) a mere scheme or rule or method of performing mental act or method of playing game;

13) a presentation of information;

14) topography of integrated circuits;

15) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;

16) inventions relating to atomic energy.

An application for a patent can be filed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority of the invention. Delay in filing an application may entail some risks such as

• some other inventor might file a patent application on the said invention and
• there may be either an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.

Generally, an invention which has been either published or publicly displayed cannot be patented as such publication or public display leads to lack of novelty. However, under certain circumstances, the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in an exhibition organised by the Government or disclosure before any learned society or published by applicant. The detailed conditions are provided under Chapter VI of the Act (Section 29-34).

A patentee enjoys the exclusive right to make and use the patented invention. The patentee also has the right to assign the patent, grant licences, or otherwise deal with the patent, for any consideration. These rights, created by statute, are circumscribed by various conditions and limitations as prescribed under the Patents Act.1970.

A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.

What are the types of applications ?

• PROVISIONAL APPLICATION
• ORDINARY APPLICATION
• CONVENTION APPLICATION
• PCT INTERNATIONAL APPLICATION
• PCT NATIONAL PHASE APPLICATION
• PATENT OF ADDITION
• DIVISIONAL APPLICATION

Generally, when an invention is not complete an application can be filed with provisional specification which is known as provisional application. This is useful in establishing a priority date for your invention. Moreover, it also gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.

A representation for pre-grant opposition under section 25(1) of Patents Act, 1970 can be filed, on Form 7A within six months from the date of publication of the application u/s 11A or before the grant of patent.

The grounds for filing pre-grant opposition are contained in section 25(1) of the Patents Act 1970

Yes, it is possible to file representation for pre-grant opposition even though there is no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period.

Since there is no worldwide patent, the applicant has to file his patent application in respective countries separately to obtain protection on his invention.

The following are the routes available to the applicant to file his International application in foreign country.

Paris Convention: The Paris Convention for the Protection of Industrial Property, established in 1883, provides for 12 months time to file the patent application in the member countries from the date of filing of the earliest application.

Patent Cooperation Treaty System: PCT is a system which allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. Not only does the PCT enable extended time period, it also simplifies filing procedure through a single application. The PCT system also provides for publication of application, International Search and International Preliminary Examination before entering the national phase.

The time for filing post-grant opposition is 12 months from the date of publication of the grant of patent in the official journal.

 The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.

Since there is no worldwide patent, the applicant has to file his patent application in respective countries separately to obtain protection on his invention.

The following are the routes available to the applicant to file his International application in foreign country.

Paris Convention: The Paris Convention for the Protection of Industrial Property, established in 1883, provides for 12 months time to file the patent application in the member countries from the date of filing of the earliest application.

Patent Cooperation Treaty System: PCT is a system which allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. Not only does the PCT enable extended time period, it also simplifies filing procedure through a single application. The PCT system also provides for publication of application, International Search and International Preliminary Examination before entering the national phase.

The PCT is an international treaty with more than 150 Contracting States which are bound with certain formal requirements set out in the Treaty and Regulations. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single international patent application instead of filing several separate national or regional patent applications however, granting of patents remains under the control of the national or regional patent offices after the corresponding  national phase application has been filed and the national phase application is assessed as per patent law of that jurisdiction. As per Indian Patent Act 1970 as amended and the Patents Rules 2003 as amended by (amendment) rules 2016, any PCT international application may be filed designating India and it shall deemed to be an application if the corresponding national phase application has also been filed.

The PCT procedure includes:

• Filing: File an international application with a RO/IN national patent Office or directly with International Bureau (IB) of WIPO, complying with the PCT formality requirements and fees. In India PCT application are filed at appropriate patent offices decided on the basis of territorial limits (Rule 4, Indian Patent Act 1970 as amended and patent Rules 2003 as amended).
• International Search: An ―International Searching Authority (ISA) identifies the published patent documents and technical literature which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention‘s potential patentability.
• International Publication: After expiration of 18 months from the earliest filing date (Priority Date), the content of your international application is disclosed to the world.
• International Preliminary Examination (optional): one of the ISAs on request carries out an additional patentability analysis, usually on an amended version of your application.
• National Phase: After the end of the international PCT procedure, usually at 30/31 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
• In India, 31 months is maximum time limit to enter national phase. To enter national phase an application corresponding to an international application is made in Form 1.

PCT applicants generally pay three types of fees when they file their international applications:

(a) An international filing fee

(b) A search fee which can vary from ISA chosen, and

(c) A small transmittal fee which varies depending on the receiving Office. Refer, Fifth Schedule of patent act 1970 as amended and patent rules 2003 as amended for fee structure for an international application designating India.