Every patent application under the Indian Patents Act, 1970 must be accompanied by the specifications of the invention. These specifications may either be provisional or complete. If the specifications are provisional, the complete specifications must be filed subsequently within a period of 12 months.

A provisional specification is not expected to fully disclose an invention with all the relevant details as these may not even be known to the applicant at the time it is filed. In fact, a provisional specification of an idea (which is in the process of being converted into an invention) may even be filed although, of course, even in such a case, a complete specification must be filed within 12 months. What a provisional specification is required to do is disclose the nature of the invention.

The provisional specification must be filed in the prescribed Form 2 which forms the first page of the specification. This Form contains the following information:
1.The Title of the Invention
2.Name, Nationality and Address of the Applicant(s)
3.Preamble to the Description: The following specification describes the invention.
4.Description (on a new page).
5.Date And Signature (to be given at the end of the last page of the specification).

The Title of the invention in a provisional specification should give a clear idea of the industry and the subject to which the invention relates. It should be brief – not more than fifteen words – precise, and descriptive of the invention. It should not contain words such as the inventor’s name, adjectives like ‘good’, ‘brilliant’, ‘best’, etc., or words in Indian languages. Some examples of the titles of patents are: Compositions comprising Carbazoles and Cyclodextrins, Novel Amino Acid Derivatives with Improved Multi-Drug Resistance Activity, A Method of Phenol Tar Desalting, Capillary Dewatering Method and Apparatus.

Form 2 is required to be filed along with Form 1 which is the application for the grant of a patent, and the information in Form 2 must correspond to that in Form 1. Form 2, however, is only the first page of the provisional specification to which additional pages which describe the nature of the invention are attached as follows: (i) an introduction mentioning what the field of the invention is and what the subject matter to which it relates is, (ii) the background of the invention containing a description of the relevant prior art along with its drawbacks, why the invention is needed and what it is to do / what problem it is to solve, (iii) a summary of the nature of the invention, (iv) a description of the invention possibly in general terms, (v) working examples and embodiments of the invention if they exist and (vi) the advantages of the invention.

Although it is permissible for the description of the invention to be in general terms, it is advisable to include as much information as is possible. This is because the claims later made in the complete specification must be fairly based on what has been disclosed in the provisional specification, and this cannot be done if the provisional specification is very sketchy. At the very least, the Description must identify what the novel features of the invention are and how they are distinct from prior art. The Description should begin with a short statement of the scope and subject of the invention such as, “This invention relates to _________,” and it should also contain:

• The objectives of the invention possibly in the format: The principal objective of this invention is __________, Another objective of this invention is ____________, Yet another objective of this invention is _________.
• Drawings if they are required.
• The principle on which the invention is being developed.
• A general statement of the essential features of the invention for which protection is desired.
• A provisional specification does not contain claims since at the time it is filed; it is unlikely that an applicant would know what the claims are.

A provisional specification helps to identify the invention. It is typically drafted before an invention is ready in its final form and therefore focuses on the nature of the invention which it discloses. It is a document of record and it cannot be amended by adding new matter to it once it has been filed. In fact, no amendment would be allowed which has the effect of adding fresh matter or extending the scope of the invention. Deleting information would also not generally be allowed especially if such deletion would result in the scope of the invention being broadened.

The main purpose of filing an application with a provisional specification is to establish a priority date. A provisional specification establishes the earliest ownership of an invention although it does not in itself confer any legal rights. It is sometimes possible to get a provisional specification amended by post-dating the application. However, doing this would automatically result in the ‘loss’ of the priority date.

Until a complete specification is filed, an application which is filed along with a provisional specification will not be examined by an examiner of the patent office with a view to deciding whether or not a patent should be granted. If a complete specification is not filed within 12 months of the filing of the provisional specification, the application for the grant of a patent is deemed to have been abandoned. However, if a patent is subsequently granted for the invention after the filing of the complete specification, the date of the patent will be the date on which the application accompanied by the provisional specification was filed.

By Nandita Saikia

References:
Indian Patents Act, 1970
Indian Patents Rules, 2003
Subbaram on Patent Law; Wadhwa; 2007

(This article is by Nandita Saikia and was first published at LawMatters.in.)