Lawmakers in the Philippines are pushing for the passage of a bill that seeks to modernise the country’s IP protection, called the “New Intellectual Property Act”, which provides for a revised IP Code of the Philippines. Upon the enactment of the proposed bill, one of the major changes on patents will be the allowance of filing provisional patent applications.
Under the current IP Code, there is no statutory provision for filing provisional patent applications. An inventor or applicant may only file a regular or normal patent application, commonly referred to as a non-provisional patent application. This type of application is filed and examined at patent offices, and eventually matures into a patent.
In contrast, a provisional patent application is a type of application that does not get examined and does not mature into a provisional patent, but allows an inventor or applicant to establish an initial filing date for their invention. An inventor or applicant who decides to file a provisional application must file a corresponding non-provisional application during a 12-month pendency period to benefit from the earlier provisional application filing.
Section 24.6 of the proposed law defines a provisional patent application as an application that establishes an early filing date with the view of filing a later regular patent application. If applicable, the provisional application contains a provisional description, at least one provisional claim, drawings and sequence listings. A provisional application will not be examined or get published, automatically withdrawn or abandoned after 12 months, and cannot be the subject of a revival.
Some countries that allow the filing of provisional patent applications include the US and Australia. In the US, provisional patent applications were created to put US inventors on a par with foreign inventors. Every so often, foreign inventors file their patents with their home country first and then file with the US Patent and Trademark Office, claiming priority to their home country application.
This denotes that foreign inventors will get an extra year of patent protection. Filing a provisional patent application gives a US inventor 12 extra months during which they can file a later regular patent application. This is also the advantage being sought in the proposed law with respect to filing of provisional patent applications.
Allowing the filing of provisional patent applications will protect inventions for 12 months even while the inventor is still making refinements or gathering more market information to figure out whether it is worth filing a regular application.
Aside from an extra year of protection and preservation of the priority date, another advantage of provisional patent applications is that they require less drafting and fewer formalities in filing compared to regular patent applications.
Section 43.2 of the proposed law enumerates the filing date requirements for a provisional patent application as follows: (1) request form for provisional application; (2) provisional description of the invention; (3) at least one provisional claim, (4) provisional drawings and/or sequence listings, if applicable; and (5) payment of the prescribed fee.
A provisional patent application is relatively easier to file than a regular application in terms of the required documents. Regarding the fees, a provisional patent application initially costs less than a non-provisional application in the US. This is yet to be seen in the Philippines, as the official fees are not yet indicated in the proposed law.
However, some limitations or drawbacks are associated with provisional patent applications, and every inventor or applicant should also be aware of this. One of the filing date requirements for a provisional patent application is the submission of a provisional description of the invention, and it is important to note that provisional applications require a degree of disclosure.
Applicants should be cautious not to include any trade secret, confidential or other sensitive information in the application. Also, while relatively inexpensive to file, provisional patent applications do not reduce the costs of preparing and filing later regular applications. The total cost of filing will increase if the inventor or applicant files a provisional application first, and files a regular application after that.
With all the potential advantages and drawbacks, it is important for inventors or applicants to closely consider the appropriateness of filing a provisional application in respect of their invention. Provisional patent applications are widely used in other countries, especially in the US. As to how the Philippines will eventually appreciate it remains to be seen when the proposed law is formally enacted and implemented.
Ramon Emil Olea is a patent specialist at Federis & Associates
FEDERIS & ASSOCIATES LAW OFFICES
Suites 2004 and 2005, 88 Corporate Centre
141 Valero St, Salcedo Village
Makati City 1227, Philippines
Tel: +63 2 8889 6197-98