The Grey Area B/W Provisional Priority VS Anticipation!

 

Dear Diary,

I’ve no idea whether this part was looked by someone else, but, the other day, I had this dilemma, as, can the concept of Self-Anticipation, which is similar to the concept of Self-Plagiarism, be also applicable w.r.t. to the Provisional Filing Priority? But how am I going to prove that?

Take this example: a provisional filing priority, but, the complete specification is NOT filed. Now, let’s say years passed, and again, the same invention is filed, now with the new priority, but this time, along with the complete specification, which would be proceeded with the normal procedural guidelines! The problem here is, that now the invention was already shared with the authorities, irrespective of it was published or not when it was materialized fully with the non-provisional / complete specification, as in the case of the provisional, of course it wouldn’t get published. The fact is, there’s no necessity also. Yet, according to me, it should be published. But again, what is abandoned in case of non-compliance of filing of the complete, how that could be published further? What about for the reason to resolve the issue of Self-Anticipation then? The ONE Year time period of prior anticipation would then become applicable in the present context also! Why? For the reason that even the Provisional is disclosed somewhere, at any office, thus like in the case of copyrights, once the matter is materialized, its legality comes into existence; similarly, once even provisional is filed or disclosed, even in secrecy at any office, and if it has not been materialized within 12 Months, and if later it has been filed once again with the new priority, then too, the concept of Self-Anticipation can be invoked! Whereas, S. 33 already deals with it, but it is again w.r.t. Complete Specification only. BTW, the word Self-Anticipation specifically w.r.t. Patents, I contend it to be introduced in the law too! Or publish the Provisional Or introduce in the Citation of the FERs.  

So where was the grey area? As explained above, the grey area was the invention been disclosed in the provisional filing, but then not been processed for the complete specification, in which case albeit it has been abandoned, yet, there’s a chance for it to get filed later at some time, maybe after several years, claiming the new priority with the new title, yet the fact is that, the priority was already claimed by the same invention, years back, even if done under the ambit of non-publication. Am I missing something?  

In one of my previous blog, I contended the retrospective claims, which shouldn’t start from the date of publication, rather from the date of the priority only included in the provisional part, because, that was also the grey area I was speaking about, wherein the period between the priority and publication is usually missing, if in case of the infringement, as and when been claimed as retrospective claims at a later stage, if of course in case the patent has been granted.

So far, my dilemmas were able to find only few Shades of Grey, as it would take time to reach to the number of 50 or maybe 100! 😊

© Pranav Chaturvedi