Provisional Patents and startups – Why should startups patent their ideas?

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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

  1. Ordinary Application
  2. Application for Patent of Addition ( Improvement or Modification of already Patented version, for an unexpired term of the main Patent )
  3. Divisional Application ( in case of plurality of invention disclosed in the main application)
  4. Convention Application, claiming priority date on the basis of filing in Convention Countries
  5. 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:

  1. 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.

  1. 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.

  1. 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.

  1. 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.

  1. 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.

  1. Confidentiality
    A provisional patent preserves the confidentiality of your application without publication.
  2. 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:

  1. Filing a full patent application that claims the provisional patent’s filing date.
  2. 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.

tag: legal issues in startups

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