I covered this topic long back. I’m covering this again with a caveat!
Let’s say between the period of provisional and complete, someone else files or use the almost similar invention. Now, issue is, technically, your right to invoke full rights, retrospectively, starts post grant only! Because usually no one knows how many claims would end up getting accepted or struck down, thus, till then, one has to wait! If anywhere it happens the other way around, then, that’s a problem, because, without the grant and on the basis of contingency & unlikeliness, one cannot enjoy the fruits of something which is still abstract and hypothetical!
Here’s a dilemma! If the specification has not been published and not disclosed, and if someone in this period, especially between the period of the provisional and complete, adopts the same invention, then, how can one file an infringement with the retrospective rights after the grant, because, as the person against whom the rights have been invoked, can claim that, this was not published at the time of his/her adoption, so how would he/she be able to access the details of it, unless the applicant only has disclosed or allowed or given access or maybe, the now defendant is only the real inventor! I’m more specifically talking about the period between the provisional and complete specification filing dates. It could also be extended to until the date of publication date.
Now, in this case, the other side can invoke the groundless threats, whilst the patentee can invoke the infringement rights! Vacuum, as both are technically, if not legally, correct in their own interpretation now!
In one of my previous blogs, I wrote that the concept of the Provisional Application should cease to exit for the reason it doesn’t serve any purpose, when a better option like Patent Of Addition can be used, instead of filing of the complete after provisional. So let there be a complete, and if someone wants to add in the invention, then, file for the Addition rather than filing for the complete after provisional! This will eradicate the grey area of the period between the provisional and complete.
Now my second suggestion was to eliminate the period of 18 Months for the publication, for the reason that, the moment the complete specification is filed, then, immediately after the scrutiny of the documents, it should be published, just like in the case of Trademarks, or maybe just alike in the case of the Copyrights, wherein, a cooling period of 30 Days is there before the Scrutiny starts!
I find this 18 Months timeline a complete waste of time! Yes, in the PCT case, one can have 30/31 months timeline for the national entry, and even the PCT publication guideline is justifiable, but for the national publication timeline, two amendments are necessary viz.:
- Remove the concept of Provisional Filings. Rather, proceed with the Complete Specification directly & then Addition which would replace the complete itself in case earlier if it was filed after provisional.
- Secondly, remove the concept of 18 Months of National publication period. It is like a Cooling Period which serves NO Purpose, on the face of it, and further, creates a grey area, wherein between upto the period of publication, one can claim to invoke the groundless threats, even if being guilty!
Now you would ask me, but Pranav, there’s already a provision of Early Publication within the period of One Month of filing of the application. So dear, then my answer would be, why can’t then we make this our default period of the Publication?
In the PCT System itself, I cited in my earlier blogs, many of the corrections that are needed to be taken at WIPO!
Am I missing something! 😊
© Pranav Chaturvedi
Pranav Chaturvedi (PC) © 