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Provisional Patent vs Non Provisional Patent

Supporting Claim Breadth in Non-Provisional Applications in the USPTO and India

During patent prosecution, patent examiners in the USPTO and India often reject patent claims as overly broad or unsupported. The provisional’s patent description must provide a "written description" that enables the invention’s scope. If the provisional patent lacks detail, amendments to broaden patent claims in the non-provisional application may be deemed unsupported, limiting the protection.

A comprehensive provisional patent description ensures flexibility to adjust claims while maintaining validity in both the USPTO and India.

Filing a Complete Non-Provisional Patent Application with Patent Claims

When a company publishes details of their invention in a way that makes it publicly available, it creates "prior art." This prior art prevents others from obtaining patents on that same invention. In India, publications can be made through various channels including:

• The Indian Patent Office's official journal

• Technical journals and publications

• Company websites or technical disclosure bulletins

• Academic papers or conference proceedings

The first step is to file a complete patent application, also known as a non-provisional application or complete specification, depending on the country. This application should include a set number of patent claims.

In India, for instance, there is no additional fee for filing up to 10 patent claims.

However, if you exceed this number, such as when filing before the PCT ( Patent Cooperation Treaty) within 12 months to increase the timeline to file in other countries, you will incur additional fees.

For example, if you file 20 patent claims before WIPO, there are no extra fees beyond the basic fee structure. Typically, PCT applications may contain 20 claims, with claims 1 to 10 covering systems and claims 11 to 20 covering methods.

While there is no strict rule regarding how many claims should be allocated to each category, it largely depends on the technology involved and how comprehensively it can be covered in the patent claims.

International Companies are increasingly filing via PCT route in India

Companies are increasingly filing via PCT route in India because it gives them 30/31 months from the priority date to make decisions about which countries they want to pursue patent protection in.

By filing through PCT but deliberately not filing a Request for Examination (RFE) in India, companies are creating an interesting competitive dynamic.

India's patent laws require that an RFE must be filed within 48 months from the date of priority. If no RFE is filed, the application is considered withdrawn. However, the PCT application's technical contents become public after 18 months from the priority date.

The new RFE 31 months deadline applies to patent applications filed on or after March 15, 2024. For applications filed on or before March 14, 2024, the due date will remain 48 months from the earliest patent priority date.

Indian Patent Office - Form 18 (Request for Examination): [Form 18 - IP India] for request of patent examination.

The International company gets the benefit of defensive publication through their PCT application becoming public, effectively preventing others from patenting the same invention in India.

They maintain the option to file patents in other key markets where they see more value in enforcement.

Provisional Patent Case Study: Consider a biotech startup that filed a provisional patent with a cursory description of a novel gene-editing method. During prosecution, the examiner in the USPTO rejected claims as anticipated by a later-published study.

The startup’s provisional lacked specifics on the method’s steps, rendering it ineffective as prior art. A more detailed provisional, including experimental data and variants, could have preempted this challenge, securing broader protection in both the USPTO and India.

While India represents a huge market opportunity, many companies find that the cost and uncertainty of patent litigation in India outweighs the benefits of patent protection.

While both patent claims and descriptions are essential components of a patent application, descriptions often take precedence during patent examination due to their role in clarifying the invention details better, and facilitating comparisons with prior art cited by the patent examiner.

Bonus Tip for Patenting: Remember, you can't add new information to your patent invention after you file it, so it's better to include too much detail than too little. Think of everything someone might need to know to understand and make your invention work.

Disclaimer: This information is provided for general educational and informational purposes only and does not constitute legal advice or opinion. The content discussed regarding defensive publication strategies, Patent Cooperation Treaty (PCT) filings, and patent examination requests in India represents general observations of potential intellectual property strategies and should not be relied upon as definitive guidance for any specific situation.

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