What is a provisional application and its complete specifications?

What is a provisional application and its complete specifications?

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Meaning and Scope of Patents 

A patent is an exclusive right or title that is conferred to a person or an inventor by the government, for an invented or manufactured article, for a limited period, so as to prohibit others from using, exploiting or selling an invention. The World Intellectual Property Organization (WIPO) defines a patent as an “exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.”1

Therefore, a patent grants certain protections to a patentee thereby giving him an exclusive right to prevent others from exploiting the patented invention commercially. This means that a patent protects an invention from being commercially made, used, distributed, imported or sold by others without the consent of the owner of the patent.

Patents are granted to inventions that satisfy the statutory requirements of novelty, inventive step (inventiveness) and capable of industrial application (usefulness). In India, the need for all-inclusive legislation was felt as early as 1948 so as to ensure that the rights associated with patents are not misused or exploited to the detriment or prejudice of the consumer, trade or industrial development of the country.2 The Patents Bill was passed by both the Houses of Parliament and received the President’s assent on 19th September 1970. 

An ‘invention’ is defined under Section 2(1)(j) of the Patents Act, 1970 to mean “a new product or process involving an inventive step and capable of industrial application.” Therefore, an invention is not considered novel if the public has been informed or intimated of such invention through publication, prior to filing a patent application for the invention. The novelty can also be destroyed through previous use of the invention before the filing of the application, in the concerned country. 

An inventive step means “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.”3 Therefore, where a proposed invention is not obvious to a person who lacks skill in the subject matter of the patent application, the patent application is said to involve an “inventive step”. 

The intricacies or the simplicity of an inventive step does not influence the grant of a patent. Thus, a very simple invention can be entitled to grant of a patent, provided it involves an inventive step. Furthermore, an invention is capable of industrial application where “the invention is capable of being made or used in an industry.”4 Thus, to be granted a patent the ‘invention’ must possess industrial application. 

Conditions that must be met to Obtain Patent Protection

Some of the essential conditions which must be fulfilled in order to obtain a patent are:

  • The invention must possess an element of novelty i.e., some characteristic which is unknown and undetermined in the already existing body of knowledge which is known as “prior art”. 
  • The invention must involve an inventive step which a person belonging to a relevant technical field, possessing ordinary skills cannot obviously infer. 
  • The invention must be capable of industrial application which means it should have an application which goes beyond the theoretical occurrence and can be used for industrial or business purposes. 
  • The subject matter of the invention must be “patentable” under law. Section 3 of the Patents Act, 1970 enumerates the inventions which are not patentable. This includes scientific principles, abstract theories, plants, animals, agricultural or horticultural methods, mathematical or business methods, computer programmes, methods for medical treatment etc.  
  • The invention must be clearly and completely disclosed in an application so that it can be reproduced by a person of the relevant field possessing ordinary skills.     

Application for Patents

The Patents Act, 1970 lays down a comprehensive procedure for the grant of a patent to an inventor which allows him to use and exploit his invention for a duration of 20 years. However, the grant of a patent is subject to the fulfilment of certain conditions. The patent application for an invention can be made by:5

  • Any person who is a true and first inventor of the invention;
  • Any person assigned by the person who is the true and first inventor of the invention;
  • by a legal representative of a deceased person who was entitled to make such an application before his death. 

Section 7 of the Patents Act, 1970 prescribes the Form of Application and lays down that:

  • That a patent application must be filed in the patent office, in the prescribed form and must be for one invention only.
  • An international application designating India, made under the Patent Cooperation Treaty, will be considered an application under this Act if a corresponding application is filed before the Controller in India.
  • Where an application is filed by an assignee who has the right to apply for a patent for an invention, one must furnish proof of the right to make the application along with the application.
  • The application must declare that the applicant is in possession of the invention and name the person who is claiming to be the true and first inventor.
  • Every application must be accompanied by a provisional or complete specification. 

Provisional and Complete Specifications

In the entire process of securing a patent “specification” is an important document. A ‘specification’ primarily describes an invention which is in the form of a claim which is submitted along with the application for patent. The ‘specification’ of a patent is a highly technical legal document which is drafted using the assistance of a patent attorney. The specification may be:

  • Provisional; or
  • Complete 

A provisional specification provides a general description of the invention whereas, a complete specification gives full and complete details of the invention. When the provisional specifications are submitted with the patent application, the complete specifications must be filed within 12 months from the date of filing the patent application and on failure to do so, the application will be deemed cancelled .6 

Therefore, an applicant while filing a patent application need not provide the complete specifications and may file provisional specifications. The main object of providing provisional specifications along with the patent application is to ascertain the “priority date” of the patent. In the period between filing the provisional specifications and complete specifications, it gives an opportunity to the applicant to conduct further research related to his invention and incorporate further developments that may have emerged in the complete specification. 

Where an applicant files two or more applications for inventions that are interconnected or where one is a modified version of the other and are accompanied by provisional specifications, in that case, if the Controller is of the opinion that the entire invention constitutes a single invention and can be made part of a single patent, a single complete specification can be filed for all the provisional specifications.7 However, in such a case the twelve-month period of filing the complete specification shall commence from the date the earliest provisional specification was filed.

Furthermore, where the specification accompanying a patent application is claimed to be a complete specification, then at the request of the applicant, the Controller may direct the specification to be treated as a provisional specification within 12 months of filing the application.8 A provisional specification can be cancelled anytime before the patent is granted, by the Controller at the request of the applicant when a complete specification has been filed and the date of the application can be changed to the date when the complete specification was filed.9

Contents of Specification

Section 10 of the Patents Act, 1970 prescribes the contents of the specification.

  • Both provisional and complete specifications must be set out with a title that specifies the subject matter of the invention and also provides a description of the invention.
  • The Controller may require drawings to be supplied for a complete or provisional specification and such a drawing will be considered a part of the specification unless the Controller directs otherwise. 
  • Where there is a need to supplement the application with a model or a sample illustrating the invention then the Controller may require such a model or sample to be presented before the grant of patent. However, such a model or sample will not be considered a part of the specification. 
  • A complete specification must:
  • provide a complete description of the invention and its operation and fully explain the use and the procedure by which it is performed;
  • the applicant must disclose the best and ideal method of carrying out the invention that is within his knowledge and for which protection is claimed by him;
  • the scope of the invention must  be defined;
  • The specification should include an abstract providing technical information on the invention. 

However, the Controller in order to provide the third parties with superior and better information may amend the abstract. 

Where a biological material is mentioned by the applicant in the specification and such material is not available to the public, in order to complete the application the material must be deposited to an international depositary authority and it must fulfil the following conditions:

  • the material should not be deposited on a date later than the date of filing the patent application;
  • for a material to be identified correctly, the specification should include all its characteristics which include the name, address of the depository institution and the date and number of depositing the material at the institution;
  • the material can be accessed in the depository institution only after the date of the patent application in India or if a priority is claimed after the date of the priority;
  • the specification must disclose the source and geographical origin of the biological material. 

Priority Dates 

A provision for priority date of claims of a complete specification has been provided under Section 11 of the Patents Act, 1970 with a view to granting monopoly rights to the inventor. The priority date serves an important purpose in ascertaining whether the invention is indeed new, keeping in view the knowledge available in the given field. The priority date is the date on which the patentee claims his/her invention. Therefore, the novelty of an invention is tested with reference to the already available knowledge on such a priority date.

Section 11 provides a detailed procedure for fixing priority dates, which are specified as under:

  • every claim of a complete specification shall have a priority date12;
  • The priority date of a claim of a complete specification which is filed in pursuance of a single application accompanied by a provisional specification or a specification which is treated as a provisional specification by virtue of a direction under section 9(3), shall be the date of filing the specification.13
  • where the complete specification is filed or proceeded with in pursuance of two or more applications and the claim is based on the matter disclosed; the priority date of one of those specifications will be the date of filing of the application accompanied by that specification and the priority date of the claim partly in one and in another will be the date of filing the application accompanied by specification of the later date.14 
  • the priority date of a claim of a complete specification which is based on a previously filed application that has been filed in 12 months from the date of that application, shall be the date of the previously filed application in which the matter was first disclosed.15
  • The priority date of a claim of a complete specification which has been filed in pursuance of a further application and the claim is based on the matter disclosed in any of the earlier specifications, whether provisional or complete, shall be the date of filing of that specification in which the matter was first disclosed.16  
  • where there are two or more priority dates for any claim of a complete specification, then the priority date of that claim will be the earlier of those dates.17
  • in any case, to which the aforesaid provisions are not applicable, the priority date of a claim shall be the date of filing of the complete specification.18
  • furthermore, a claim in a complete specification of a patent shall not be invalid by reason of- (a) the publication or use of the invention which has been claimed on or after the priority date of the claim; (b) grant of another patent which claims the invention, in a claim of the same or a later priority date.19 

Conclusion

From the above discussion, it is amply clear that a patent specification, whether provisional or complete, is a document which gives a detailed explanation of the invention in very specific terms. It reflects the domain under which the patentee is seeking his invention to be covered. Despite the differences in the two kinds of specifications i.e., provisional and complete they essentially serve the same purpose which is to describe and give a detailed description of the invention and its applicability.

A provisional application is filed when the invention is still in its development stages and it also allows the patentee to secure a priority date for his invention. However, a 12 month period is given starting from the date of filing a provisional application to file an application of complete specification. Therefore, this 12-month time frame gives sufficient time to the patentee to incorporate any new aspects or characteristics which might emerge, related to the invention. Thus, an application of provisional specification does not have to be very precise, although it helps to secure a priority date.

On the contrary, an application for the complete specification is filed when the invention is complete in all its aspects. The complete application specifies every minutest of detail with respect to the invention. An elaborate description improves the chances of registering a patent. 

Thus, the patentee must include drawings, designs, and the claims must be very specific and precise. The various components of the invention along with its applicability and future scope should be clearly stated in the application. Therefore, a comprehensive and detailed application will discourage others from infringing or raising objections to the application at the time of publications. 

Endnotes

1.  https://www.wipo.int/patents/en/ 

2.  The Patents Act, 1970 (Act 39 of 1970). 

3.  The Patents Act, 1970 (Act 39 of 1970), s. 2(1)(ja). 

4.  The Patents Act, 1970 (Act 39 of 1970), s. 2(1)(ac). 

5.  The Patents Act, 1970 (Act 39 of 1970), s. 6(1). 

6.  The Patents Act, 1970 (Act 39 of 1970), s. 9(1). 

7.  The Patents Act, 1970 (Act 39 of 1970), s. 9(2). 

8.  The Patents Act, 1970 (Act 39 of 1970), s. 9(3). 

9.  The Patents Act, 1970 (Act 39 of 1970), s. 9(4). 

10. The Patents Act, 1970 (Act 39 of 1970), s. 10(4A). 

11. The Patents Act, 1970 (Act 39 of 1970), s. 10(5). 

12  The Patents Act, 1970 (Act 39 of 1970), s. 11(1).

13. The Patents Act, 1970 (Act 39 of 1970), s. 11(2). 

14. The Patents Act, 1970 (Act 39 of 1970), s. 11(3). 

15. The Patents Act, 1970 (Act 39 of 1970), s. 11(3A). 

16. The Patents Act, 1970 (Act 39 of 1970), s. 11(4). 

17. The Patents Act, 1970 (Act 39 of 1970), s. 11(5).

18. The Patents Act, 1970 (Act 39 of 1970), s. 11(6). 

19. The Patents Act, 1970 (Act 39 of 1970), s. 11(8). 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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