Pavan is CEO of Whitemoney, which specializes in Copyright, Trademarks and patenting issues. In this post, Pavan shares his views and opinions about how and why startups should really patent their ideas.
On February 14th 1876, Alexander Graham Bell applied for a Patent on an apparatus that could transmit speech electrically, beating out his rival, Elisha Gray, by just two hours. Never mind that Gray’s design worked better. Timing was all that mattered. When Gray later filed a lawsuit. The courts awarded the patent to Bell, who went down in history as the official inventor of the telephone.
So what’s the moral of the story? If you have bright idea—even one without commercial value—don’t wait for someone else to figure it out and cash in first. By failing to secure the rights to your idea, you run the risk of having your invention slip into the “Public Domain”. And once that happens, there is very little you can do to prevent others from manufacturing, selling and otherwise capitalizing on your innovation. Take a lesson from history and protect your ideas as soon as possible
What is Patent??
A Patent is an intellectual property right relating to inventions and is grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others from making, using, selling, importing the patented product or process producing that product for those purpose.
In Short the word ‘PATENT’ denotes a monopoly right in respect of a new and useful invention. A Patent may be in respect of a substance or in respect of a process.
Legislation
The Patent system in India is governed by the Patent Act, 1970 ( No. 39 of 1970 ) as amended by the Patent (Amendment) Act, 2005 and the patent rules, 2003, as amended by the Patent (Amendment) Rules 2006 effective from 05-05-2006.
Types of Patent
- Ordinary Application
- Application for Patent of Addition ( Improvement or Modification of already Patented version, for an unexpired term of the main Patent )
- Divisional Application ( in case of plurality of invention disclosed in the main application)
- Convention Application, claiming priority date on the basis of filing in Convention Countries
- National Phase Application under PCT
We will now brief you on Provisional Specification, if anyone has any queries on other Patents, feel free to mail us
Why Provisional Patent Or Provisional Specification?
Great ideas happen every day. But the idea, invention, or process isn’t always credited to the person who came up with it first. Sometimes, someone overhears an idea. Sometimes you’re so excited, you’ll tell anyone who will listen about it. And sometimes, believe it or not, someone else will come up with the same invention at just about the same time.
A Provisional Specification Application establishes your priority with a “date of invention.” In other words, it tells the world “This is my invention.” The reason it’s so important to file a Provisional Patent Application is because in Patent Law, it’s often not the person who came up with the idea first who wins – it’s the person who takes action and files the patent application first.
What is a provisional Specification application?
A Provisional Specification Application (PS) is a means by which you can establish and protect a “date of invention” until a full patent is filed with the Indian Patent Office. The provisional specification option was created to provide inventors with an inexpensive way to temporarily protect their inventions until they decide to pursue a full patent. Easier to file than a full patent, a PS allows you to establish an early effective filing date for a future patent without a formal patent claim, oath, declaration, or an information disclosure statement.
How long does a provisional specification last?
A provisional patent has a 12 month pendency period from the date of filing. A patent inventor must file a full (non-provisional) patent application to take advantage of the provisional patent’s filing date. If a full patent is not filed within a year, the provisional patent application is considered abandoned.
What is the difference between a provisional specification and a full (non-provisional) application?
A PS is a shorter version of a full (non-provisional) patent application. It is used to secure a filing date for a later filed full patent application. Once a PS is filed, an inventor has exactly one year to file a full patent application. If an inventor does not file a full application within a year, the PS is considered abandoned and the inventor loses the right to the filing date. Although inventors can still file a full patent application later, they lose the filing date of the provisional application and may also lose the right to the invention if they have already disclosed the invention to the public. Filing a PS saves inventors significant upfront investments and allows them time to assess their invention’s commercial value, conduct research, or seek funding before committing to the high cost and lengthy process of a full patent application.
Benefits of Provisional Specification
There are several advantages of filing a provisional patent application:
- Lower cost and faster preliminary process
The provisional patent filing fee is much less expensive than a full patent fee. In addition, the technical requirements are simplified, which means it takes much less time and money to prepare and file a provisional patent application.
- Establishes an official patent filing date
Full patent applications filed within twelve months of the provisional application date have the benefit of “relating back” to the provisional patent application. This means that should a dispute arise over invention ownership, the Patent Office will accept the provisional patent’s earlier filing date as the date of filing.
- One year to assess the commercial viability of your invention
You can take advantage of the provisional patent’s one-year pendency period to evaluate the commercial potential of your invention before committing to the upfront costs of obtaining a full patent. If you decide to make modifications to your invention during the one-year period, you can file a new provisional patent application and then consolidate both provisional patents into one “regular” patent.
- Use of the “patent pending” notice
Prior to the advent of the provisional patent application, an inventor had to file a full patent application in order to use the label “Patent Pending” or “Patent Applied For.” You may now do so upon filing a provisional patent application. This label is often useful in deterring potential theft.
- Extending the patent term
A patent lasts for 20 years, measured from the date that a full patent application is filed. By first filing a provisional patent that lasts for 12 months, you could conceivably extend your patent rights by a full year.
- Confidentiality
A provisional patent preserves the confidentiality of your application without publication. - Immediate approval
Because a provisional patent application is not reviewed by a Patent Office examiner, you avoid spending time and/or attorney fees communicating with the examiner and redrafting claims during the regular patent process.
Turning Your Provisional Patent into a Full Patent
Once your provisional patent application is filed with the Patent Office, you have exactly twelve months to apply for a full patent in order to claim the earlier filing date as the date of invention. This can be done in two ways:
- Filing a full patent application that claims the provisional patent’s filing date.
- Filing a petition to convert the provisional patent into a full patent application.
Although both of these actions result in a full patent application, the term of the patent will differ. With the first option, your patent term will be measured from the date that your full patent filed. With the second option, the term will be measured from the filing date of the provisional patent. Thus, with the first option, you are effectively able to add up to an extra year to your patent term.
In order for the full patent application to have the benefit of the provisional patent’s filing date, the description of the invention in the provisional patent application must be similar in sufficient detail to the invention as described in the full patent application. In other words, the Patent Office must be able to confirm that the invention described in your provisional patent application is the same as the invention covered in your full patent application.
Therefore, it is important to be as thorough as possible when disclosing your invention in the provisional patent application. For this reason, the Patent Office highly recommends that you include professional illustrations of your invention with your provisional patent application.
In addition, since a provisional patent application is not reviewed by the Patent Office, the filing of a provisional patent does not guarantee that you will actually be awarded a full patent. Instead, the full patent application is evaluated on its own merit. Only if the full patent application is approved will the provisional patent’s filing date be used as the priority date of the patent.
what are the expenses involved in filing and obtaining a patent rights-can you pls explain
At the time, when the whole world and especially US is realizing the flawed patent system and big companies are embracing and moving towards open source as their chief strategy to sustain competitive advantage, its not wise for Indian startups to get into patents business.
I dont think startups need to patent their idea. It might be too costly (especially when the idea has not been validated).
How much does the provisional patent cost? Do you see Indian companies going for such kind of patents?
I’d love to know
Hi all,
@ Vinod, The official filing cost of Patent in India is less that 20k, its the Attorney charges that makes it look costly, higher branded attorneys, higher attorney cost, and you also have the option of PCT which is governed by International Laws.
@Venkat, This depends on what type of invention you have with you, if you spend a life time on creating or inventing Something, you would not want anyone else to take it from there. especially if a startup invents something, you can protect it against all the big guns for a limited period of time ( 20 years, but it various ). It gives you enough time to work on it.
Patent are “exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention”. Once you apply for Patent, it open to all, but they do not have right for it for a limited time. Some of the best known secrets are never patented coz they dont want to disclose it in public domain, like the combination of aerated drinks like Coke
@Jace, It again depends on type of invention, the option of provisional Specification has made it easier for inventors to file the same and the main patent application can be filed within a year if required. The cost of Provisional Specification varies according to Attorneys, If you choose to go with the the very best in South India, it may cost you close to 30,000/- ( varies according to complexity’s of the invention )
Many of them use patent statistics as a measure of ‘technological assertiveness” The No. of Patents filed in India are ever increasing ( more then 360 % from past decade ) but low compared to other countries. According to WIPO ( World Intellectual Property organization) Japan & USA are the largest recipients of Patent filings followed by China , the Republic of Korea and the European Patent Office. In the list of Top 20, India comes in 11th position, but less than 5% of what Japan Files
The charges you mention seem reasonable. I know that getting a patent filed in the US, with all the usual process, lawyers, etc., takes about 25k in USD!! Therefore, not every startup or innovator files for patents unless it is very core to his/her startup. Large companies (such as the one I work for now) have a more stream-lined process for this. Incidentally, many companies do not file patents when they want to keep this proprietary technology off the radar from potential competitors.
@ Shantanu,
The cost mentioned here is of filing in India, in US, the cost skyrockets mainly because the cost of attorneys, they charge a bomb. we also do PCT Patent application in US, European Union and other countries, but the charges of Attorneys in US are the highest
Once we have filed the provisional patent and someone else tries to file during that pending one year, then are their application put into Queue or simply rejected?
And If we somehow fail to prove the concept within a year. Can we again get it extended with the payment for another year?
@ Piyush, Once I file the Provisional Patent today and in next three months, some one comes with the same idea and files the same idea under provisional patent, both your entries or recorded, It records your priority date, if you fail to file the full patent, you loose the priority date. And later when you decide to file the Full Patent after 15 months, the person who filed the provisional patent after three months of your application will have the priority date advantage.
In the period of 12 months of provisional Patent, if some one else files a full Patent, for the invention which is identical to yours, you can stop him and claim the patent only when YOU file the Full Patent within a year “Only if the full patent application is approved will the provisional patent’s filing date be used as the priority date of the patent.”
No, extensions are not given, “If a full patent is not filed within a year, the provisional patent application is considered abandoned”. However you can file the Full Patent even after a year, but the date of Provisional Patent will not be considered.
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Thank goodness that “ideas” are not yet patentable, despite what the title of the post says. You can patent “inventions” – that is, one particular way to implement a given idea. Moreover, the invention needs to satisfy the 3-point-test. Specifically, it has to be:
Novel
Non-obvious and
Useful
The students have vague and misplaced ideas about patents and sadly, nobody cares to explain it to them. At least not the patent lawyers, of course, because they make their money when people apply, whether it gets accepted or rejected. Repeat after me, ideas are not patentable. Otherwise, I’d like to patent my idea of a time-machine
cheers
nilesh
Dear Sir,
I wish to know about drafting of provisional patent. Can I mention the outline of the invention in provisional patent or should I mention it bit more elaborately? Please answer. I shall be thankful to you. Venika
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Hello
I have written a novel and along with this i am working on a script of a movie.. I wanted to know more about Patent my work. i got a lot of information from [link]http://www.pitchindia.com/[/link] Pitchindia. However, I was wondering if i can get some more information on what should be done and how it is to be done…
May 12, 2009
Are you a Film maker?
I have a movie idea or maybe a part of a whole movie that I am certain it is not yet tackled in any movie. It has main idea that will tell the substance of the action scenes similar to Hollywood movies like action ideas in Die hard 4.0, Anti Trust, Minority Report, So close and many more.
Hi Pavan, i Would like to know when can we commercialize a patent applied invention?. can we commercialise it / bring it into public domain right after applying for provisional specification or should it be after appliying the complete specification?
I am working on a educational tool that if works out has a wider application by millions of people. But it is not proven yet. i have applied for the provesional spec through online and have a valid provisional patent number. now i want to involve developers to bring it to life and test its functionalty.
i have limmited resources just sufficeint to develop and launch the application. I am not eager to seek funding from others at this intitial stage. So after developing the app can i bring it into public domain and make it avaliable for my target audience at the patent pending stage?
secondly is there a prvisional spec facility for the PCT? or do we need to apply the complete specification only?
Thanks in advance for your reply. its gona be invaluable for me.