Filing a complete application in continuation to a provisional application could be a trickier task than it appears to be. There are various factors, particularly from the Applicant’s perspective, that need to be considered to achieve a complete-after-provisional application, aptly meeting the expectations and requirements of the applicants. This article aims to provide clarity to the applicants for filing such applications to appropriately capture the invention, leading to a strong patent portfolio for them.
Provisional applications are an important tool for a lot of applicants to secure the earliest priority date, particularly, when they need more time to finalize the complete scope, implementation details, and the merit of the invention. Even in cases where the disclosure of the invention is upcoming, for example, in any exhibition conference or client meeting, and the applicant does not have enough time to draft a strong complete application, the applicant can consider filing a provisional application, as that would take significantly less time than preparing and filing the complete application.
The applicants can file the provisional application, capturing the essence of the invention as soon as that is conceptualized, to secure the earliest priority date. Also, unlike for complete applications, there is no strict prescribed format for disclosing the details of the invention in the provisional application. Therefore, the applicants can disclose the details of the invention to any extent or in any format that is convenient or readily available to them, as far as it is legible.
One important consideration while preparing the specification for the provisional application should be that the core of the invention along with whatever embodiments are finalized so far shall be captured in the specification. This is because any claim filed at the time of the complete application, the content of which was not disclosed, either partially or completely, in the provisional application, will be accorded the filing date of the complete application as the priority date. On the other hand, the claims that were disclosed, even in brief or in an informal manner, in the provisional application, would be accorded the filing date of the provisional application as the priority date. The date of disclosure of the content of the claim would be considered the priority date for that claim. Therefore, the applicants shall target to at least capture the content of the intended independent claim of the invention in the provisional application, even if briefly or informally. It would allow the applicant to establish the earliest priority date for at least the independent claim if needed.
Once the provisional application is filed, the applicant gets 12 months to file the corresponding complete application having the comprehensive details of the invention, including but not limited to, field, background, problem addressed, drawings, detailed description of drawings, technical advancement, and the claims of the invention. The detailed description shall include the constructional, operational, and implementational details of the invention. The applicants can also consider including experimental data of the invention, if any, as that adds more credibility to the merit of the invention and has usually worked in the favor of the applicant before the Indian Patent Office (IPO) at the time of examination.
The applicants sometimes cannot finalize the complete details of the invention within these 12 months. In that case, the Indian Patents Law allows the applicant to use the facility of post-dating the provisional application, i.e., basically pushing the priority date of the application. An application can be post-dated by a maximum of 6 months. For example, if the filing date of the provisional application is January 1st, 2023, the IPO allows the applicant to post-date up to July 1st, 2023.
The applicant can post-date the application to any number of days, as long as it is less than 6 months, by filing a corresponding request. Therefore, the applicant can file multiple requests, depending on the requirements, as long as the maximum duration of post-dating does not exceed 6 months. Each such request will entail a separate prescribed fee. For example, if the applicant has filed a first request for post-dating the application by 20 days but could not file the complete application within these 20 days, the applicant can then again file a second request for post-dating the application by a further period.
One very important point to be considered while post-dating the application is that when you are shifting the priority date of the application, you are also increasing the pool of the prior art for the application. In the example where the application is post-dated by a maximum of 6 months, the literature published in these 6 months will also be eligible to be cited against your application, if found valid, during the examination of the application. Therefore, the applicant shall be extremely cautious when post-dating the application.
Sometimes, during the finalization of the details of the invention for the complete application, the scope of the invention also varies. For example, the applicant may identify or happen to develop multiple inventions from the content of the provisional application. Since one complete application can have only one invention, the applicant can then file multiple complete applications capturing different inventions, claiming priority from the provisional application.
In contrast, the applicant may sometimes consider merging multiple provisional applications into one complete application, when the content of either of the provisional applications may not seem to have enough merit for independently qualifying as a complete application. In this case, due care should be exercised to ensure that the collated application shall be filed before the due date of the complete application that is falling early, ensuring that the priority dates of both applications can be claimed.
It is always advisable to ensure that the invention is appropriately captured at the time of drafting the application only. Keeping in mind the efforts invested by the inventors/applicants in innovating, their inventions must be protected in the best possible way. The abovementioned strategies would help the applicants in achieving that to build a strong patent portfolio.
Ms. Manisha Singh is known to be one of the most reputed lawyers in the Intellectual Property domain, with a decorated career of over 25 years. She has served as a vital advisor to corporations and research organizations in handling intellectual property matters and developing strong IP portfolios. She is ceaselessly engaged in endeavors to strengthen India’s IP protection and enforcement system to align it with international standards and work closely with industry associations and the government. Ms. Singh has served as the leading counsel for a client base in over 138 countries in their IP management and litigation matters. She is identified by her clients as a seasoned and reliable counsel for the prosecution and enforcement of all forms of IP rights, and planning and management of global patents, trademarks, and design portfolios. She has also led numerous negotiation deals on behalf of her clients for both IP and non-IP litigation and dispute resolution.
Piyush is an Associate Partner in the Engineering - Patents group at LexOrbis. He joined the firm in 2018 and has been working closely with several national and international clients to manage their patent portfolio. He has more than 11 years of rich experience in patents-related work. Apart from representing clients during prosecution and oral hearings pertaining to patent applications before the Indian Patent Office, Piyush also assists in the prosecution of foreign patent applications. Further, he provides technical and legal support during patent litigations and oppositions. He has also handled various patent analytics and search-related projects, such as patentability searches, invalidation searches, Freedom-to-Operate searches/opinions, and patent landscapes, involving the search of products or patent/non-patent literature. Piyush also has authored articles on various aspects of the Patents Law and frequently speaks at conferences.
