I filed a provisional patent. What happens at month 12?
A provisional patent filing starts a 12-month clock. File the complete specification in time or the application is deemed abandoned. Here is how it works.
CA Harun Raaj
makeitlegit.in
You filed a patent application with a provisional specification. You have an early date on record. A clock is running. This article explains what it asks of you.
Where you stand today
A provisional specification is a first, lighter description of your invention. Under the Patents Act 1970, every specification, provisional or complete, must "describe the invention" and begin with a title that sufficiently indicates what the invention relates to (s.10(1), Patents Act 1970). Drawings can be supplied, and the Controller can require them (s.10(2), Patents Act 1970). Under the Patents Rules, 2003, every specification, whether provisional or complete, is made in Form 2 (rule 13(1), Patents Rules, 2003).
The provisional filing is not a patent. It is a placeholder that fixes a date.
The rule at month 12
Here is the core rule. Where an application for a patent is accompanied by a provisional specification, a complete specification must be filed within twelve months from the date of filing of the application. If the complete specification is not filed in time, the application is deemed to be abandoned (s.9(1), Patents Act 1970).
Two things to notice.
First, the clock starts on the date you filed the application, not on the date you got a receipt, a number or a reply from the Patent Office.
Second, the consequence is automatic. The Act does not say "may be abandoned if the Controller decides". It says the application "shall be deemed to be abandoned". Do not wait for a reminder or a notice before you act.
This twelve-month rule applies to an ordinary application accompanied by a provisional specification. It is written for an application that is not a convention application and not one filed under the Patent Cooperation Treaty designating India (s.9(1), Patents Act 1970). If you are in either of those categories, have a professional look at which rules apply to you.
Why the complete specification matters so much
The provisional specification buys you a date. The complete specification is where you claim what you actually want protected.
The Act ties the two together through priority dates. Each claim of a complete specification has its own priority date (s.11(1), Patents Act 1970). Where a complete specification follows an application with a provisional specification, and the claim is fairly based on the matter disclosed in the provisional specification, the priority date of that claim is the date of filing of the provisional specification (s.11(2), Patents Act 1970).
Read the words "fairly based on the matter disclosed". A claim gets the early date only if your provisional actually disclosed that matter. If your invention grew between the two filings, the new parts do not get the early date. The Act allows a complete specification filed after a provisional to include claims for developments of, or additions to, the invention described in the provisional, but only those that you would be entitled to file as a separate application under section 6 (s.10(7), Patents Act 1970).
For founders, this has a practical meaning. Your provisional should be written as if the complete specification will be built on it. A thin, vague provisional gives you a date that protects very little.
Why the early date helps you
Here is the benefit that makes a provisional worth filing. If a complete specification is filed in pursuance of an application with a provisional specification, the Controller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated, by reason only that any matter described in the provisional specification was used in India, or published in India or elsewhere, at any time after the date of filing that provisional specification (s.33(1), Patents Act 1970). Note the wording: it is use in India that is covered, not use abroad.
In plain words: if you show the product at a demo day in India, publish a description of it or post about it after your provisional date, that alone cannot be used to knock out the later patent. Whether a particular demo, sale or foreign disclosure fits within the words of section 33 is a question for your patent professional. The protection works only if the complete specification actually follows. If month 12 passes without it, the application is deemed abandoned (s.9(1), Patents Act 1970), and you have nothing to build on.
The deadline clock
Count it plainly.
- Day 0: the date you filed the application with the provisional specification.
- Month 12: the last stretch in which the complete specification can be filed (s.9(1), Patents Act 1970).
- Month 18 from filing or priority: the Rules say an application shall not ordinarily be open to the public for eighteen months from the date of filing or the date of priority, whichever is earlier (rule 24, Patents Rules, 2003). After that, the application is published (s.11A(3), Patents Act 1970). You can ask for earlier publication on Form 9 (rule 24A, Patents Rules, 2003).
- Month 31 from priority or filing: a request for examination is made in Form 18 within thirty-one months from the date of priority or the date of filing, whichever is earlier. The Patents (Amendment) Rules, 2024 (notified 15 March 2024) replaced forty-eight months with thirty-one months. An application filed before those Rules commenced keeps the earlier forty-eight months (rule 24B(1), Patents Rules, 2003, as amended by the Patents (Amendment) Rules, 2024).
Only the first is the month-12 deadline. Filing the complete specification does not start examination by itself. The examination request is a separate step with its own date.
Can the 12 months be extended?
Do not plan on it. The twelve months is written into the Act itself, and section 9 contains no power to extend it (s.9(1), Patents Act 1970). The Patents Rules do have a general power to extend time. As substituted by the Patents (Amendment) Rules, 2024, it lets the Controller extend a time specified for doing an act or taking a proceeding under the Rules, or condone a delay, by up to six months, on a request in Form 4 made before that period expires (rule 138, Patents Rules, 2003, as substituted in 2024). That rule is framed around acts and proceedings "thereunder", that is, under the Rules. Its text does not say that it reaches a period fixed by the Act itself. So do not assume that a Form 4 request will rescue a late complete specification. Treat month 12 as hard, and ask a patent professional before you assume otherwise.
Step by step: what to do before month 12
1. Mark the date now. Put the filing date of your application in your calendar. Then set reminders at month 6, month 9 and month 11. Do not rely on the Patent Office to remind you.
2. Review what your provisional actually disclosed. Compare it with your product today. Anything new is a development or addition (s.10(7), Patents Act 1970). Know which parts are covered by the early date and which are not.
3. Prepare the complete specification. It is made in Form 2, like the provisional (rule 13(1), Patents Rules, 2003). It carries the claims. The claims of a complete specification must relate to a single invention, or to a group of inventions linked so as to form a single inventive concept. They must be clear and succinct, and fairly based on the matter disclosed in the specification (s.10(5), Patents Act 1970). Keep this in mind while drafting: wide claims that your description cannot support are the usual weak point.
4. Reuse your drawings if you want. If you wish to adopt the drawings filed with the provisional as the drawings for the complete specification, it is enough to refer to them as those filed with the provisional specification (rule 13(4), Patents Rules, 2003).
5. File the inventorship declaration. Where the application was not accompanied by a complete specification, a declaration as to inventorship is filed in Form 5 with the complete specification, or within one month from the date of filing of the complete specification, as the Controller may allow on an application in Form 4 (rule 13(6), Patents Rules, 2003).
6. Keep your foreign filings in view. If you are prosecuting the same or substantially the same invention in another country, the Act requires a statement of detailed particulars and an undertaking to keep the Controller informed up to the date of grant (s.8(1), Patents Act 1970). The Rules put the statement and undertaking in Form 3 (rule 12(1), Patents Rules, 2003), to be filed within six months from the date of filing the application (rule 12(1A), Patents Rules, 2003). Any fee for these filings is paid to the Patent Office. Check the current schedule on the Patent Office website before you file. This article does not quote fee amounts.
7. File with room to spare. Do not file on the last day. Give yourself weeks, not hours.
Other things the Act lets you do
Treat a complete specification as provisional. If you filed a specification that purports to be complete, you can ask the Controller, within twelve months from the date of filing, to direct that it be treated as a provisional specification (s.9(3), Patents Act 1970). This is for founders who filed a complete specification too early and want more time to refine it. The request must come inside those twelve months.
Combine several provisionals. Where two or more applications in your name are accompanied by provisional specifications for inventions that are cognate, or where one is a modification of another, the Controller may allow one complete specification for all of them if he thinks they make a single invention. The twelve months is then counted from the filing date of the earliest provisional specification (s.9(2), Patents Act 1970). The Controller decides this. You cannot assume it.
Post-date your application. After a complete specification has been filed, the Controller may, on your request made before grant, cancel the provisional specification and post-date the application to the date of filing of the complete specification (s.9(4), Patents Act 1970). Think hard before asking for this. You give up the earlier date, and the section 33 shield is tied to the date of filing of the provisional specification (s.33(1), Patents Act 1970), so take advice before you ask.
What not to do
- Do not treat the provisional as your patent. It grants nothing. It only holds a date.
- Do not file a thin provisional and hope. Claims get the early date only if "fairly based on the matter disclosed" in it (s.11(2), Patents Act 1970).
- Do not wait for a reminder. Abandonment happens by operation of law (s.9(1), Patents Act 1970).
- Do not publish more than you must before filing the complete specification. The shield in section 33 covers matter described in the provisional specification and used or published after its filing date. Matter that was never in your provisional is a different story.
- Do not skip the examination request later. Filing the complete specification is not the end. A request for examination in Form 18 has its own period (rule 24B(1), Patents Rules, 2003).
What to do now
| Step | Deadline | If you miss it |
|---|---|---|
| Diarise the filing date of your application with the provisional specification | Today | You risk missing the next date without noticing |
| File the complete specification in Form 2 (rule 13(1), Patents Rules, 2003) | Within twelve months from the date of filing (s.9(1), Patents Act 1970) | The application is deemed abandoned (s.9(1), Patents Act 1970) |
| File the inventorship declaration in Form 5 | With the complete specification, or within one month of it if the Controller allows on Form 4 (rule 13(6), Patents Rules, 2003) | Ask your patent professional straight away |
| File the request for examination in Form 18 | Within thirty-one months from the date of priority or filing, whichever is earlier; forty-eight months if filed before 15 March 2024 (rule 24B(1), Patents Rules, 2003, as amended in 2024) | The application is treated as withdrawn (s.11B(4), Patents Act 1970) |
Have a CA review your facts before you act or file.
Claim drafting is work for a registered patent agent or an advocate who handles patents.
Frequently asked questions
1. Is the twelve months counted from the date I filed or from the date the Patent Office acknowledged it?
From the date of filing of the application (s.9(1), Patents Act 1970). Use the filing date on your receipt, and ask your agent if the two dates differ.
2. What happens if I miss month 12?
The application is deemed to be abandoned (s.9(1), Patents Act 1970), and an abandoned application is not published (s.11A(3)(b), Patents Act 1970).
3. Can I add new features in the complete specification?
Yes, as developments of or additions to the invention described in the provisional, if you would be entitled under section 6 to make a separate application for them (s.10(7), Patents Act 1970). But the early priority date attaches only to claims fairly based on what the provisional disclosed (s.11(2), Patents Act 1970).
4. Does filing the complete specification start the examination?
No. A request for examination must be made in Form 18 within its own period (rule 24B(1), Patents Rules, 2003). For applications filed on or after 15 March 2024, that period is thirty-one months from priority or filing, whichever is earlier; earlier applications keep forty-eight months. Missing it means the application is treated as withdrawn (s.11B(4), Patents Act 1970).
5. Do I pay the fees to a consultant or to the Patent Office?
Government fees are paid to the Patent Office. This article gives no fee figures. Check the current fee schedule on the Patent Office website before you file.
6. Which form do I use for the specification?
Form 2 for both provisional and complete specifications (rule 13(1), Patents Rules, 2003).
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