Australian provisional patent applications

A first step to patent protection in most countries

An Australian provisional patent application is a popular first step on the road to patent protection.

A provisional application lasts for 12 months and forms a basis for patent protection in most countries. At the end of the 12 months, further patent applications can be filed to continue pursuing patent protection. The further patent applications (e.g. an international patent application) are formally linked to the provisional application.

Filing allows you to go public

Once an effective provisional application is filed, you can publish, make, use and sell (etc) the invention without affecting your patent rights. Provisional applications are not published unless the further patent applications are filed, so if you choose not to continue with patent protection the invention is kept secret. The further patent applications can include additional information to take account of developments in the technology since the provisional application was filed.

Later on when the further patent applications face examination, the filing date of an effective provisional application (the ‘priority date’) will be used. To qualify for protection, the invention covered must vary sufficiently from what was publicly known prior to this key date.

Filing is straightforward

Filing a provisional application involves little more than filing a patent specification with the Australian Patent Office. The patent specification is not routinely examined. So long as basic formal requirements are satisfied (e.g. the document appears to be a patent specification in English), objections are unlikely.

The wording is critical

Whilst filing seems simple, it is critical that the patent specification is very carefully prepared. A provisional application can be thought of as the foundation stone of your patent position: whilst it’s not routinely examined, it is critical to get right. If the claims (definitions of coverage) of the further patent applications are not adequately linked to the contents of the provisional application, the provisional application will not be effective and the filing dates of the further patent applications (or other later dates) will be used during examination. This will lead to the further patent applications being invalid if your invention is non-confidential, or if others go public with similar technology, prior to these later dates.

Requirements vary from country to country

The ‘adequate linking’ requirement varies from country to country. In Australia, until recently the claims had to be ‘fairly based on matter disclosed’ in the provisional application. This required a ‘real and reasonably clear’ disclosure in the provisional application of the invention defined by the claims. This standard continues to apply to patent applications where examination of the further application was requested prior to 15 April 2013. The new Australian law requires the provisional application to disclose ‘the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a [non-inventive person familiar with the technology]’. This is likely to be interpreted as a stricter requirement. Other jurisdictions, notably Europe and China, have stricter requirements. It is good practice to draft the patent specification with these stricter requirements in mind.

We pride ourselves on drafting high quality provisional patent applications to form solid foundations for effective patent protection in Australia and internationally. Melbourne based. Global reach. BRM PATENT ATTORNEYS