2 minute read
Where the disclosure is made to any third party, including a legal counsel, the
when an inventor converts the idea into an operative form, capable of being recreated by other people skilled in the art. It, therefore, has the effect of generating a legal presumption that the invention has been reduced to practice since the date of filing itself.
What are the Demerits of Filing a Provisional Application?
Advertisement
There are many advantages of pursuing a provisional application before filing a complete specification. However, there are a few disadvantages as well, which an inventor needs to be aware of, a few of which are mentioned below:
1. Increased Cost of Filing: It is worth noting that there are other costs associated with filing a provisional application, including the cost of preparing the requisite documents and hiring an attorney. Therefore, the use of provisional applications will always cost more than the filing of a non-provisional application. 2. Risk of Prosecution Estoppel: These days, the risk of prosecution history estoppel has increased, specifically where multiple provisional applications are made. Due to such a risk, the defendants in a Patent Infringement suit can preclude the proprietor of the patent from arguing a construction of a claim that would
‘retrieve’ the subject matter surrendered during the prosecution of the patent.
Therefore, once the proprietor negates a claim, he cannot include it later as he is estopped from overstepping his claims, which were narrowed later. 3. Loss of Trade Secret: The disclosure of the invention, if made too explicit, may lead to the disclosure of too much information, which may contain the tradesecret or know-how of achieving the desired result. This is because the applicant has to submit an enabling description that enlists the best mode of performing
the invention, and it may result in disclosure of more than what may be necessary at a much early stage of development.
Conclusion
A provisional application has many benefits; however, it also has adjoining disadvantages for both domestic and foreign applicants. The scale of merits and demerits depends on the nature and value of the invention as well as the aims, needs, and objectives of the entity supporting the development of the invention. Therefore, it is necessary to take into consideration all the previously-mentioned factors while making subjective interpretations of each of them to arrive at the best possible strategy for filing a patent application. ✅ For more
