Provisional patent in India: Everything you should know

What is a provisional patent?

A provisional patent is a quick way to file a patent application to protect your invention. A provisional patent application gives gives you 12 months’ time to decide if taking your provisional patent application forward is worth the time and cost.

Benefits of filing a provisional patent application

Filing a provisional patent application has a lot of advantages and are discussed here in detail:

1. Easier and faster to get a patent application in place and secure the all-important priority date.

With the majority of the world following the first to invent system, it is important to file your patent application at the earliest. Given the less stringent standards required for filing a provisional patent application, it is easier and faster to prepare and file a provisional patent application and claim the priority date.

2. Breach of confidentially may not do so much harm.

If you are thinking of talking to manufacturers, distributors, investors or disclosing your invention to a prospective partner, you can’t for sure rule out that someone may leak out your invention, even under confidentiality.

Signing NDAs is important but you can’t be 100% confident that the information you disclose may not leak out some way or the other. To avoid such cases, if your invention is strong enough to eventually get a patent, it would be advisable to quickly put across a provisional patent application before disclosing your invention(s) to any third party. This will ensure that a disclosure by any third party won’t hurt your chances of getting a patent. Moreover, if someone tries to replicate your patent pending idea, you may still have a strong case against them.

3. Gives you 12 months to explore and test the commercial viability of the invention.

Once, the provisional patent application is filed, you get 12 months to test and experiment with the invention and determine the viability of the invention. This time window helps you to ensure that you end up spending money only if the invention shows promise.

4. Reduction in the initial cost of filing a patent.

A provisional application can be filed when the idea has reached a stage wherein it can be disclosed on paper. The provisional patent application in India need not contain certain important parts of a patent application like the claims. Since, claims are not required to be drafted and filed at the time of filing a provisional application in India, the initial cost can be reduced.

Further, if you are planning to engage a patent agent or a firm, generally the cost of drafting the patent application is also split between the provisional and the complete specification. So, you will end up paying a smaller drafting component upfront and the remaining for the complete around 12 months’ time.

5.   Use 'Patent pending'

Once, a patent application is filed, whether provisional or complete, the patent applicant can use the ‘Patent pending’ tag to show that the applicant is intending to protect the invention as a patent and claim rights over the invention.

The ‘patent pending’ tag also acts as a notice to third parties in case of an infringement case after the patent has been granted. However, it should be noted that a patent application can’t be enforced until a patent has been granted.

If you want to learn more about the advantage of filing a provisional patent, you can read more here: IPhandbook and Carrferrell.

Table 1: Benefits of Provisional Patent Application

Benefit	Explanation
Swift Protection	Secure an early priority date, which is crucial for the first-to-file patent system
Confidentiality Safeguard	Offers some level of protection in case confidential information about the invention gets leaked
Commercial Testing Period	Offers a 12-month period to assess the commercial viability of the invention
Cost-Effective	Initial filing costs are lower because a provisional patent application does not require claims
'Patent Pending' Status	Can use this term for deterrent effect and demonstrate an intent to enforce the patent rights once granted

How to file a provisional patent in India

For filing a provisional patent in India, a provisional specification needs to be drafted and filed. While drafting a patent specification, you need to ensure that all the parts of specification which are necessary for filing a provisional specification are included. Furthermore, your provisional patent application also need to include the corresponding forms. Each of these two aspects are described in more details in the following sections.

Documents and forms required for filing a provisional patent

An application for a patent, especially a provisional application filed with the Indian patent office needs to include the following forms:

• Form 1 – Application for grant of a patent
• Form 2 – Provisional specification
• Form 3 – Statement and undertaking regarding foreign applications.
• Form 26 – Form for authorization of a patent agent (only required if you are using a patent agent to help you file the application)
• Form 28 – To be submitted by small entity (only required if you are claiming small entity status)

Parts of a provisional patent specification in India

Each patent application which is filed with the Indian Patent office should contain the following parts:

• Title
• Description
• No need for Claims - A provisional patent application doesn't need to include claims.
• No need for Abstract - Not necessary in a provisional specification.

It is important to note that each provisional specification which is filed should include as much information the applicant has at the time of filing of the patent application as new matter can’t be added later.

Table 2: Provisional Patent Application Process in India

Procedure	Details
Preparing the Application	Includes drafting a provisional specification with title and description
Required Forms	Forms 1 (Application for grant of a patent), 2 (Provisional specification), 3 (Statement and undertaking for foreign applications), 26 (If filing through a patent agent), 28 (If applicant is a small entity)
Costs	Government fee (₹1600 for individuals, startups, small entities; ₹8000 for large entities). Optional professional fee for patent agent or attorney (varies widely & starts at 6,000)
Post-filing Actions	Submission of signed copies of Form 1, proof of right (if applicant and inventors differ), Form 26 (if filed through a patent agent), complete specification (within 12 months), and potential foreign filings (within 12 months)

Provisional patent cost in India

A common question which people ask is if filing a provisional patent application free? The simple answer is No.

For filing a provisional patent application in India, the following costs are applicable:

• Government fee for filing a patent application
• Professional fee charged by a patent agent / attorney to draft a provisional patent (optional)

The government fee is a mandatory component and for filing a provisional patent application with up to 30 pages, the government fee is 1,600 for individual applicants, startups and small entity applicants and 8,000 for large entity applicants.

In addition to the government fee, professional fee is also applicable if you decide to engage the services of a patent agent. Based on our research with premier patent firms in India, the professional fees charged by patent agents for drafting and filing a provisional patent application in India generally varies between ₹15,000 to ₹75,000 depending on the technology area, years of expertise of the patent firm and the type of patent applicant. Typically, over 90% of the cost involved in the patent process is for availing the services of a patent lawyer / law firm.

If you are tight on budget, you can even get individual patent agents to help you with the drafting and filing of the provisional patent application. In such cases, the professional fee can be as low as 6,000 plus government fees.

Next steps after filing a provisional patent application

Important timelines to be maintained after filing a provisional patent application in India are as follows:

• Submission of signed copies of Form 1 (within 6 months from your filing date)
• Submission of proof of right, in case the applicant and inventors are different (within 6 months from your filing date)
• Submission of Form 26, in case the application is filed through a patent agent (within 6 months from your filing date)
• Submission of complete specification, in case you wish to proceed with the patent application (within 12 months from your filing date)
• In case the applicant wishes to protect their inventions in foreign countries, filing convention application(s) or a PCT application (within 12 months from your filing date)

Is a patent search required before filing a provisional patent application?

Though, performing a prior art search is not mandatory before filing a patent application, it is still a good idea to conduct a search either before or after a provisional patent application has been filed. If the priority date is critical and the applicant is pressed for time, you can get a search performed after the provisional application has been filed. The search is important as it helps to ensure that you don’t end up spending on a patent applicant which doesn’t have a good chance of getting a grant eventually.

Important Factors to Consider for Provisional vs Complete Patent Application?

Whether you should file a provisional patent application or a complete patent application (also known as non-provisional patent in some countries) depends on multiple scenarios. Below we have listed a few important aspects you might need to consider to decide if a provisional patent application or a complete patent application is the right choice for your business.

• Stage of invention – The stage of the invention generally determines if a provisional should be filed or a complete. If the invention is still not matured, it is a good idea to file a provisional. If the invention is finalized with no expected iterations, a complete may be filed.
• Initial expense – A provisional patent application is relatively inexpensive as compared to a complete application as the provisional specification doesn’t include all the parts of a patent application and doesn’t require the same amount of time as a complete.
• Claims and abstract – As opposed to a complete specification which needs to include all the parts of a patent application, a provisional need not include the claims and abstract.
• Independent existence – A provisional patent application has no existence if a corresponding complete application is not filed within 12 months as the patent application is considered to be abandoned. However, a complete application once filed will continue on its own, provided other actions are taken in due course of time.
• Foreign filing of patents – Though, both the provisional and complete can be used for claiming priority, however, any foreign application filing like PCT application or a convention application needs to be mandatorily accompanied by a complete specification only.

Table 3: Important Factors to Consider for Provisional vs Complete Application

Factor	Provisional Application	Complete Application
Stage of Invention	Preferred when the invention is not fully matured or developed	Preferred when the invention is finalized and unlikely to change
Initial Expense	Lower initial expense due to fewer requirements	More expensive due to the need for a complete specification
Claims and Abstract	Not required	Required
Independent Existence	No independent existence; application is abandoned if complete application isn't filed within 12 months	Can continue on its own, given other necessary actions are taken in time
Foreign Filing	Both provisional and complete can be used for claiming priority, but a complete specification is required for any foreign application filing like PCT or a convention application