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Provisional Patent Application: Your place holder in the patent process

Updated: Dec 11, 2020

Your innovation needs timely and proper protection. Hence, the decision to protect your invention can’t be put on hold for a very long time. Having said this, filing a patent application too early can also be a waste of time and money. So, till you make up your mind on how and what you should protect in your invention, is there a way to keep your idea safe from getting copied while not getting engaged in the technicalities of the patent process? Thanks to intellectual property rights, the answer to the said question is YES. Provisional patent application can come to your rescue.

Taking advantage of provisions of intellectual property rights:

As an inventor, you may come across a situation where your invention is not final, but can be put on paper. Provisional patent application is filed at this early stage when the invention is not complete but the field of invention and its scope can be defined to some extent. This application helps to secure a priority date of the invention. Post filing provisional application, the inventor is free to gauge the viability of the invention without the fear of someone else getting a patent for the same innovation. For example: in pharmaceutical industry, companies go for provisional patent applications as they prepare for clinical trials and commercialization of formulations.

An important thing to note here is that provisional application has to be followed by a complete specification/non-provisional application within 12 months from date of filing otherwise the patent application shall be deemed as abandoned. Filing the non-provisional patent application will make your invention eligible for a formal examination process which will decide the final outcome of your patent application- whether it is patent grant or refusal.

In simple language, provisional application buys you 12 months of time to make a prototype of your invention and gather sufficient data to substantiate your research or idea while holding an early priority date for your invention. It is somewhat like your friend holding a spot for you in a long queue at a shopping store’s billing station, while you try out and decide whether to buy your favorite outfit or not. Plus, you can start using the term ‘patent pending’ as soon as you file the provisional application to send a message to others that your invention is intended to be patented.

What all can you do in the 12 months of the provisional application?

Nobody can deny that inventing something new is risky and exciting at the same time. You can’t be totally sure of the final outcome of your research or how your innovation would be perceived in the market. But intellectual property rights aim to ease out the process with facilities like provisional patent application. As discussed above, after filing the provisional application, you have 12 months to file the complete specification. Following are a few things that could be done in this period:

Testing the choppy waters:

Needless to say, stepping into the market is a challenging task, especially if you are a new entrant. Hence, it is always wise to research the potential of your product in the market before you launch it. You could conduct a market research to ascertain the marketability of the product before you make further investment on it. Since, provisional application costs you quite less than a complete patent application, it is a reasonable way secure your invention for the time being and test its viability in the market.

Look out for investors or licensees:

Since you can use the status- ‘patent pending’, your invention may seem as a good prospect to investors. In case you are not willing to manufacture your product on your own, you could start approaching companies or persons who may be willing to license your invention. A pending patent is always better than no patent at all. It gives confidence to investors or licensees to invest in your idea and also deters others from copying or using it without your permission.

Develop your invention to its full potential:

Now that the basic idea behind your invention is secure for the time being, thanks to provisional patent application, you can focus your attention on fully developing your product. As your invention takes the final shape, you may work on figuring out which parts of your invention should you be claiming as inventive or novel.

Decide whether to proceed or not:

During the 12 months long period, you may decide to drop the idea of investing further on your invention, owing to bad market conditions, lack of investor’s or licensee’s interest, product not being as lucrative as expected etc. In this situation, the expenditure you did on filing a provisional patent application wouldn’t hurt you much as it would be far less than what you would have spent on a complete patent application.

Non Disclosure Agreement and Provisional Patent Application:

Suppose for any reason, you don’t wish to get into the patent process at all. Or taking your priorities into account, you want to abandon your provisional patent application by not further filing a non-provisional application. But since you have to disclose it to your mentors, potential business investors or partners, how can you keep it safe from being copied? Disclosing your idea to anyone can hamper your chances of getting a patent in future. In this case you can go for a Non-Disclosure Agreement (NDA). It provides a safeguard to prevent partners, investors or other people who know of your invention, from disclosing confidential information to others. It also prevents others from using the confidential information for a purpose other than what it has been agreed for.

However, it is important to note that NDA cannot be considered as a fool proof way to protect your intellectual property. Yes, you can take action against anyone who has breached the NDA. But, in case public disclosure of information has occurred, it may still act as a hindrance in getting a patent. Framing a well planned IP strategy for your business right at the start, can help you decide the appropriate mode of protection based on your business requirements.

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