According to the Patent Act 1994 that was amended according to the initial Patent Act 1952, innovators were allowed to file for a provisional patent application. The provisional patent application process provides potential patent holders with a plethora of advantages which includes the following:
- Provisional patent applications allow you to secure your intellectual property rights by securing an earlier priority filing date;
- Provisional patent applications are simpler and more cost effective to file as compared to non-provisional ones;
- Products and marketing material may be accompanied with a “patent pending” before committing to a patent application from the provisional patent application while considering its financial prospects;
- The provisional patent application safeguards your idea while you are working on the details for a non-provisional application;
- The public, including competitors, may be notified of your provisional patent application, indicating that you are working on a patent application.
However, under the current Intellectual Property (IP) code by the International Patent Office of the Philippines (IPOPHL), there is no such thing as a provisional patent. Nevertheless, lawmakers in the Philippines are taking steps to progress towards the passage of a bill that may modernise the country’s IP protection, deemed the “New Intellectual Property Act,” which provides for an amended IP code of the Philippines. Upon enactment of the proposed bill, one of the few major changes on patents include the allowance of filing provisional patent applications.
Prior to this, an inventor or applicant may only submit filing for a regular patent application, commonly referred to as a non-provisional patent application. This form of application is typically filed and examined at the patent offices, eventually maturing into a patent once approved. Contrasting a regular patent application, what is a provisional patent application?
Provisional Patent Application
Filing for a provisional patent application may be a first step for many towards obtaining a formal patent. Since the provisional patent application does not require examination upon filing, the cost for the provisional patent application is significantly less than a regular patent application, and is simpler. Nevertheless, in order for the provisional patent application to mature into a formal patent, the applicant must file for a non-provisional patent application within 12 months upon filing the provisional patent application.
The provisional patent application may contain a provisional description of an invention, at least one provisional claim, drawings and sequence listings. Further, the provisional patent application will not be automatically withdrawn or abandoned after 12 months, and cannot be subjected to revival should the applicant wishes to file the non-provisional patent application based off of said provisional patent application.
Several countries allow for provisional patent applications such as the United States (US) and Australia. In the US, provisional patent applications were created to place US investors on par with foreign investors. Every now and then, foreign investors may file their patents within their home countries firstly before filing in the United States, hence claiming priority to their home country application. This further solidifies the fact that foreign investors’ will get an additional year of patent protection. This sort of advantage is the main factor that is being brought up in the proposed law with respect to filing of provisional patent applications.
Despite the advantages of the provisional patent applications, there are several limitations or drawbacks associated with it, in which every applicant or inventor should be aware of. One of the filing date requirements for a provisional patent application is the submission of a provisional description of the invention, which is important to note that the provisional patent applications require a certain degree of disclosure in order to fulfil the requirements of said applications. Applicants will have to be cautious and wary to not include any trade secret, confidential or sensitive information within the provisional patent application. While relatively inexpensive to file the provisional patent application, they do not reduce the cost of preparing and filing regular patent applications thereafter. In contrast, the total cost for filing a regular patent application after a provisional patent application may increase later on.
Generally, filing for a provisional patent application has both its advantages and disadvantages. It is important for inventors or applicants to consider the appropriateness of filing a provisional patent application in respect to their invention. It remains to be seen how Philippines will eventually appreciate the prospects of a provisional patent application, but only time will tell when the proposed law is formally enacted and implemented.
If you are an individual or an entity looking to file provisional patent applications in countries such as the United States and Australia, we highly recommend consulting an experienced IP firm for advice in conducting said application. Filing a provisional patent application may be intimidating for first time inventors and/or innovators. Nevertheless, the Pintas team will be able to assist you from the early stages of the provisional patent application to the formal patent application. Do reach out to us if you have further enquiries.