The first decision in an Indian patent filing is whether to file a provisional specification or go straight to a complete one. The provisional is quicker and cheaper and secures a date; the complete is the document the patent will actually be granted on. The twelve months between them is the one deadline in the whole process that has no extension at all.
Quick reference
| Provisional | Complete | |
|---|---|---|
| Purpose | Fix a priority date | Define the patent |
| Must contain | A description of the invention | Full description, claims, abstract, drawings |
| Claims | Not required — and better left out | Required |
| Follow-up | Complete within 12 months, or the application is abandoned | — |
| Extension | None | — |
| Fee | Same basic fee either way |
What a provisional is for
A provisional specification describes the invention. It does not have to define it in claims, and the Patent Office’s own manual advises against including any, because the provisional exists to establish a date for a disclosure rather than to mark out a monopoly.
Filing one gives the applicant a priority date for everything the provisional discloses, and twelve months to file the complete specification. In those twelve months the invention can be developed, tested, shown to investors under confidentiality, or filed abroad claiming the Indian date. Nothing is published, nothing is examined, and the fee is the ordinary filing fee.
It suits an invention that is real but still moving — a prototype not yet final, a process not yet optimised, a product whose commercial form is not settled.
What a complete specification must do
The complete specification is the patent. It must fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method known to the applicant; end with claims defining the scope of what is sought; and carry an abstract. Drawings are included where they help.
It is the document that is published, examined, opposed and, if granted, enforced. Everything the applicant will ever be entitled to must be in it, because nothing can be added later.
The twelve months — no extension
A complete specification must be filed within twelve months of the provisional. If it is not, the application is deemed abandoned.
Until 2005 the Act allowed the period to be stretched to fifteen months on request and payment. That proviso was removed, and there is now no extension of any kind. Nor does post-dating help: the Act lets an application be post-dated by up to six months in some circumstances, but expressly makes that subject to the twelve-month rule, so it cannot be used to buy time for the complete.
Some guidance online still describes the fifteen-month extension. It has not existed for twenty years.
An abandoned provisional cannot be revived. The applicant can file again, but with a new date — and if the invention has been disclosed in the meantime, with no valid application at all.
Priority between the two
The complete specification takes the provisional’s date only for what the provisional disclosed. A claim in the complete that is not fairly based on the provisional gets the complete’s own filing date instead.
This is the point most often misunderstood. A thin provisional — a paragraph and a sketch — secures a date for that paragraph and sketch, and nothing more. If the complete specification, twelve months on, claims features the provisional never mentioned, those features are dated to the complete, and anything published in between can be cited against them.
The practical rule: a provisional should describe the invention as fully as the applicant can at the time, including alternatives and variants. Brevity saves a few hours of drafting and can cost the priority date for the claim that matters.
Converting and combining
Complete to provisional. An applicant who filed a complete specification can ask, within twelve months of filing, for it to be treated as a provisional. This is occasionally useful where the applicant realises the invention has developed beyond what was filed and wants to file a fuller complete on the original date.
Several provisionals, one complete. Where an applicant has filed more than one provisional for inventions that are cognate — related enough to belong in one application — a single complete specification can be filed covering all of them, and each part takes the date of the provisional that disclosed it.
Post-dating. An application can be post-dated by up to six months on request, which is sometimes used to align dates within a family. It does not extend the twelve months for the complete, and it moves the priority date later, so it is rarely without cost.
Choosing
File provisional when the invention is real but still developing, when speed matters because a disclosure or a competitor is coming, or when the applicant wants a date now and a decision on foreign filing later. File complete when the invention is fully worked out and the applicant is ready to be examined on it — or when the filing is a convention or PCT one, where provisional filing is not available anyway.
Either way, diarise the twelve months on the day of filing, and treat the entry as immovable, because it is.
Frequently asked questions
How long do I have to file a complete specification after a provisional in India? Twelve months from the provisional filing date. If the complete specification is not filed in time, the application is deemed abandoned.
Can the twelve-month deadline be extended? No. The extension to fifteen months that once existed was removed by the 2005 amendment. Post-dating the application does not extend it either, as the Act makes post-dating subject to the twelve-month rule.
Does a provisional specification need claims? No. It must describe the invention, and the Patent Office’s manual advises against including claims, since the provisional fixes a date for a disclosure rather than defining a monopoly.
Does my complete specification get the provisional’s priority date? Only for what the provisional disclosed. Claims in the complete that are not fairly based on the provisional take the complete’s own filing date, and intervening publications can be cited against them.
Can a complete specification be converted to a provisional? Yes, on request within twelve months of filing. The applicant then has the balance of the twelve months to file a fresh complete on the original date.
Can I file one complete specification for several provisionals? Yes, where the provisionals cover cognate inventions. Each part of the complete takes the date of the provisional that disclosed it.
Useful official resources
- IP India — patents — Form 2 and the Manual of Patent Office Practice on specifications
See our related notes on the five kinds of application and every stage from filing to grant.
Twelve months from a provisional coming up, or unsure whether the provisional you filed will carry the claims you now need? Talk to us.