29 Aug 2018

Different types of Patent Applications

Provisional Application

A Provisional Patent Application is designed to provide a lower-cost first patent filing for a utility patent. It consists of details of the invention along with relevant drawings that describe how to make and use your invention. A provisional patent application allows filing without any formal patent claims or declaration, or any information disclosure (prior art) statement. It provides an applicant with “patent pending” for a period of one-year.  At the end of this one-year period, the provisional application is automatically abandoned with no extensions available. A provisional patent application will not, by itself, get you a patent since no examination of the patentability of the application in view of the prior art is performed.

A non provisional application can gain priority from the provisional application’s filing date if filed during this one-year period.

Non-provisional (Regular or Standard) Patent Application
A Non-Provisional Patent Application enables protection of inventions. It establishes the filing date of patent application and begins the examination process. The patent application will be examined by appropriate patent office. A Non-provisional Patent application must essentially consist of:

  • A written document which comprises a specification (description and claims), and an oath or declaration;
  • A drawing in those cases in which a drawing is necessary; and
  • Declaration and Power of Attorney
  • Filing fee

A non provisional patent may or may not result in the grant of a patent depending upon the outcome of an examination by the patent office it is filed in.

Continuation Patent Application
A Continuation Patent Application is a patent application that adds claims to an already-filed patent application, known commonly as the parent application. The continuation uses the same specification as the parent application, claims the priority date of the parent application, and at least one of the inventors should be common as in the parent application. In order for a continuation application to be filled, the following conditions should be met:

  • be filed while the parent application is pending
  • have at least one inventor in common with the parent application, and
  • have claims that are fully supported by the parent application’s disclosure

Continuation applications are also used when an applicant later discovers that a potentially patentable invention that was disclosed in the original application has not been claimed yet.

In this case, a later filed continuation application is filed to protect this invention. No new subject matter can be added in the continuation application .The claims in the continuation application should be within the scope of earlier specifications.

Term of both the patents expire at the same time.

Continuation-In-Part (CIP) Application
A continuation-in-part application (or CIP or CIP application), is an application to which the applicant has provided substantially the same specification as the parent application, but has disclosed additional subject matter that was not included in the parent application.

For a continuation-in-part application, claims to subject matter that was also disclosed in the parent application are entitled to the parent’s priority date, while claims to the additional subject matter are only entitled to the filing date of the CIP application. CIP applications are generally used to claim enhancements that were developed after the patent application was filed.

The term of the CIP patent is less than 20 years as it starts from the filing date of the earliest parent application and will end on its expiry date.

Divisional patent Applications
A divisional application is an application from an earlier patent application that had two or more inventions in it. The Patent Office issues a Restriction Requirement to those applications that have two inventions disclosed in it and that requires the applicant to choose one of the disclosed inventions for prosecution and to withdraw the claims directed to the other invention. The applicant may then file a divisional application at any time during which the parent application is pending wherein the claims that were removed from the original application are resubmitted.

The divisional applications must claim only subject matter that is disclosed in the parent application have the same specification as the parent applications, claim the priority date of the parent, but have a different set of claims.

Term of both the patents expire at the same time.

Patent Cooperation Treaty (PCT) Application
PCT a multilateral treaty also called as an “international patent application” provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. This application can be filed in any language and allows an applicant to file a patent application in any of the PCT member countries with in 30-31 months from the priority date for the application. Although the PCT system does not provide for the grant of an international patent, the system:

  • simplifies the process of filing patent applications
  • delays the expenses associated with applying for patent protection in other countries
  • and allows the inventor more time to assess the commercial viability of his/her invention.

The patent office or any other office designated by each Contracting State becomes a ‘receiving office’ for receiving patent applications. These applications are then transmitted to WIPO for administrative actions. At WIPO the patent application is referred to International Searching Authorities (ISA). A search or international search is then performed by an authorized International Searching Authority (ISA) to find the most relevant prior art documents regarding the claimed subject matter. The search results in an International Search Report (ISR), together with a written opinion regarding patentability.

The ISR is normally provided by the ISA to the applicant 9 months after filing of the application in the event of a first filing and 16 months after the priority date in the event of a subsequent filing (i.e., claiming the priority of a first filing).

In order to obtain protection in each individual country the inventor chooses, it is necessary for the PCT to be converted (filed) in the national patent offices of the selected countries where the invention will be subject to an examination in order to meet the national requirements for novelty, obviousness etc.

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