All About Provisional Patent Filing

Hello Guys,

In this Blog, the detailed procedure and information for filing a provisional patent is described. This Blog gives information about “why to file patents?” and “how to file a patent?”. Also, various forms required and things to consider are mentioned.

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Let us start with basics and go through some common questions: -

Que 0: What is a patent?

Patent is a government authority or licence conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention.

Also, refer:

https://www.quora.com/Can-I-get-my-idea-patented/answer/Omvir-Singh-17?share=86f6d158&srid=umhG6

Que 1: Why to File Patent?

An invention patent is a property right, a valuable business asset. It allows the owner to stop others from making, using, selling, and importing the protected invention. Thus, a patent is important to safeguard your invention. It can protect any product, design or process that meets certain specifications as per its originality, practicality, suitability, and utility.

Que 2: What are the different types of Patents?

There are three types of patents:

1) Utility Patents are applicable to the invention, discovery, or improvement of any useful process, machine, article of manufacture, or composition of matter.

 For example, a utility patent would be used to protect a new process of making a computer (process), a new type of computer (machine), a computer part (an article of manufacture), or a new chemical (the composition of matter).

2) Design Patents are applicable to the invention of a new, original, and ornamental design for an article of manufacture.

 For example, a design patent would be used to protect visual characteristics or aspects of a computer (assuming that it is new and unique). Design patents only protect the appearance of an item, but not an item’s structural or functional features.

3) Plant Patents are applicable to the invention or discovery and asexual reproduction of any distinct and new variety of plant.

 For example, a plant patent would be used to protect a new type of plant variety discovered or bred.

Que 3: How to do research? How to search whether your invented idea is existing or not?

This important question often arises while doing research.

Here is the link for searching Patents on official Indian Patent Website:

http://www.ipindia.nic.in/e-gateways.htm#public-search

You can go through official journals: http://www.ipindia.nic.in/journal-patents.htm

For more clarity, search on this link

http://patft.uspto.gov/netahtml/PTO/search-bool.html

For the detailed and deep checking, you can search your idea on

https://www.ieee.org/

https://scholar.google.co.in/

To download research papers for free use https://sci-hub.tw/

Use YouTube, Quora or every other possible platform in order to improvise your idea and to confirm whether your idea is existing or not.

Note: While Searching Keyword in the search bar, search the main keyword along with the related word. Let us understand with the following example.

Suppose your topic is suspension, then related keywords damper, shock absorber, etc need to be considered while searching for existing technologies and research work.

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PATENT FILING

For Filing the patent, there are two methods-

1) Provisional Specification

2) Complete Specification

Let us understand the difference between them:

A provisional patent application is filed when you want to secure your idea and want to do further research in order to make your invention clearer. After filing the provisional patent you will get about a year period to file complete specification.

The advantages of Filing Provisional Patent is:

Ease of preparation, lower cost, and the ability to use the term "patent pending", which can only be legally used when a patent application has been filed, and which may have significant marketing advantages.

While the Complete Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification.

FORM FILING PROCEDURE FOR THE PROVISIONAL PATENT:

Let us study about the different types of forms required along with their significance-

Generally, Form 1,2,3,5 and 9 are required.

Click this link to download the forms-

http://www.rkdewan.com/requirementforms.php 

SIGNIFICANCE OF FORMS:

1) Form 1: APPLICATION FOR GRANT OF PATENT.

2) Form 2: Brief description of the Patent. We will further discuss this.

3) Form 3: STATEMENT AND UNDERTAKING UNDER SECTION 8.

4) Form 5:  DECLARATION AS TO INVENTORSHIP.

5) Form 9: For publishing your invention in the journal of Indian patent office.

Refer the following links for various forms and fees.

http://www.ipindia.nic.in/form-and-fees.htm

https://www.quora.com/If-I-have-an-invention-how-can-I-make-it-a-patent/answer/Abhishek-Gupta-598?share=febad5aa&srid=umhG6

Q. Is Form 9- Publication really necessary?

Even if you don’t submit Form 9, your abstract will be submitted after 18 months in Indian Patents Journal. And if you want to publish it earlier, it will take anywhere from 12-15 months. So, it is recommended not to waste money for form 9.

Q. What is the difference between Inventor and Applicant?

Applicant is one (person/s only) who generates the original idea and the applicant is one (same persons or any organisation) who files the patent. Note that applicant gets the royalty and all business profits. For example, a car company filed a patent for airbags, but originally some people (Inventors) from the organisation came with the idea.

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 SOME PRECAUTIONS TO AVOID  PROBLEMS YOU MAY FACE WHILE PATENT FILING:

1.      All forms must be typed and printed.

2.      It is better to go for an offline procedure rather doing Online. Just because you may face problem in DIGITAL SIGNATURE.

3.      Always give the Page number to the pages in each and every form (Including Diagrams) according to different sections.

4.      Each and every diagram must be on a separate page. Make sure that the name and number to each and every part are given. Give the numbering in the diagram itself and make a bill of material for Naming.

5.      CAD Model is enough for the Diagrams.

6.      Do any type of editing with black pen only if required as the forms will be typed and printed by you.

7.      Keep some vacant space for the sign of applicant and inventors.

8.      While filing the form, type the name of applicant and inventors because too much editing with a pen may lead to the rejection of forms and you need to produce new typed forms.

9.      Demo or Model is not required for the Provisional Patent.

10.  Carry Laptop and spare unfilled forms.

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FORM 2 details

The first page of the form 2 shall contain:

1. Title of the invention;

2. Name, address and nationality of each of the applicants for the Patent

3. The preamble to the description.

4. Description

5. Claims

6. Date and Signature

7. Abstract of the invention

1. Title of the invention:

The title should be sufficiently indicative of the subject matter of the invention and shall

disclose the specific features of the invention. It shall be brief, free from fancy expressions or ambiguity and as precise and definite as possible, but it need not go into the details of the invention itself and should not ordinarily exceed fifteen words.

The following are not permissible in the title:

Inventor’s name, the word ‘Patent’, words in other languages, the abbreviation “etc”, fancy words e.g. “Washwell Soap”, “Universal Rest Easy Patent Chair”

2. Name, address and nationality of each of the applicants for the Patent

The first applicant in the list/table must be from the State (Area under that Patent office) wherein the patent is being filed. Like for Patent office Mumbai the first applicant must be from the States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli

http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

Nationality is INDIAN and not INDIA.

3. Preamble to the description

For Provisional specification start with,

“The following specification describes the invention …”

4. Description:

(should start from the new page)

Field of the Invention and use of Invention

The description should preferably begin with a general statement of the invention so as to

indicate briefly the subject matter to which the invention relates,

e.g. “This invention relates to …………………”.

 Thereafter, the advantages of the invention may be mentioned to bring out clearly the areas of application and preferable use of the invention.

The applicant may substantiate industrial applicability of the invention in this part.

Prior Art and problem to be solved

This part should indicate the status of the technology in the field of the invention with reference

to developments in the field, patents and pending patent applications in the specific art. When the invention relates to an improvement on an existing product or process, a short statement of the closest prior art known to the applicant shall also be given.

However, the description should fully and particularly describe the invention, by clearly distinguishing it from such a closest prior art, known to the applicant.

Objects / Objectives of the Invention

The purpose of this part is to clearly bring out the necessity of the invention. It shall clearly mention the technical problems associated with the existing technology and the solution for that, bringing out the differences between the claimed invention and the prior art. The solution sought by the invention should be clearly brought out as object(s) of inventions with statements like “It has already been proposed ………………” followed by the objects which the inventions have in view

 e.g “The principal object of this invention is ……………”, “Another object of this invention is ……………..”, “A further object of this invention is ………….” etc.

Summary of the Invention

The description should include a summary of the invention before giving the details of the invention and the method of performing it. The statement should clearly set forth the distinguishing novel features of the invention for which protection is desired. This part is intended to declare different aspects of the invention.

For detailed invention description refer https://www.nitrkl.ac.in/docs/SRICCE/IPR/Guidelines%20for%20Filling-up%20Indian%20Patent%20Form%20-%202.pdf

Drawings

• Drawings or sketches, which require a special illustration of the invention, shall not appear in the description itself. Such drawings shall be on separate sheet(s).
• Drawings shall be prepared neatly and clearly on a durable paper sheet.
• Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3 cm at the bottom and right hand of every sheet.
• Drawings shall be on a scale sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings.
• Drawings shall be sequentially or systematically numbered and shall bear in the left-hand top corner, the name of the applicant;  in the right-hand top corner, the number of sheets of drawings, and the consecutive number of each sheet; in the right-hand bottom corner, the signature of the applicant or his agent.
• No descriptive matter shall appear on the drawings except in the flow diagrams.

5. Claims:

Claims are not necessary for Provisional Specification.

6. Date and Signature

If you are unsure of the date do not print it. Leave some space for the same.

Each applicant must write his/her name and sign above it. Depending upon the number of applicants adjust the space. Do not overcrowd the space.

7. Abstract

It is not necessary for Provisional if not giving for publication i.e., (Form 9)

The abstract shall commence with the title of the invention. The abstract shall constitute the purposes of searching in the particular technical field, by making it possible to assess whether there is a need to consult the specification itself.

The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention.

Where necessary, the abstract shall contain the chemical formula, which characterizes the invention.

The abstract may not contain more than one hundred and fifty words.

 If the specification contains any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of the drawings which may accompany the abstract when published. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing. The Controller may amend the abstract for providing better information to third parties.

For official FAQs

http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf

Que: How to reach office?

http://www.ipindia.nic.in/address-of-patents-offices.htm

To reach the Mumbai Patent office, first reach Dadar Station and get a bus from Dadar station to post office, Antop Hill. Patent office is near it.

Disclaimer:

This writing is based on our experience. For more, you can prefer the official patent website of India.

Contact Details:

Lakhan Meghani - lakhanmeghani9130@gmail.com

Omkar Nanaware - Omkn663@gmail.com