Step one: a detailed provisional, prepared as a complete specification
We start with a provisional application, which establishes your international priority date and gives you 12 months of patent pending status. That period lets you test the commercial feasibility of the invention, by taking a product to market, raising investment or approaching licensees, before committing to international costs.
The provisional is not a brief placeholder. We prepare it in complete specification format, with the claims drafted first and the technical description written around them. A typical Patentec provisional runs to 20 to 50 pages of description supporting 20 or more claims. The reasons are legal ones. Since 2013, section 40(1) of the Patents Act 1990 requires a provisional to disclose the invention clearly and completely enough for a skilled person to perform it, and each claim only gets the provisional's date for what the provisional actually disclosed. We explain the consequences of falling short in the pitfalls of a poorly prepared provisional patent application.
Doesn't a detailed provisional limit the invention?
This is a common worry, and it comes from treating a specification as one thing when it is really two. The scope of protection is set by the claims, not the description.
The claims are drafted broadly, to the inventive concept in its most general form, with narrower claims below them adding specific features. The description is deliberately specific. It sets out exactly how the invention works, in what we call optional wording: a component "may" be made from a given material, "in one embodiment" it has a particular shape, "alternatively" it is arranged another way. The detail supports and illustrates the claims without narrowing them.
That detail pays for itself during examination. If an examiner says a broad claim is anticipated or obvious in light of prior art, we draw on the description to amend the claim to a feature the prior art lacks, and argue that the amended claim is new and inventive. The more technical detail the specification contains, the more of these points of distinction we have available against prior art that nobody has found yet. Our article on how to read patent claims shows how these fallback positions work.
Detail in the description doesn't narrow your patent. It gives you somewhere to go when the examiner cites prior art.
Step two: use the provisional period well
Alongside commercial testing, the provisional period lets you capture improvements. Once a complete application is filed, no new technical matter can be added to it. During the provisional period, though, improvements can be protected in further provisionals or brought into the complete application when it is prepared. This flexibility is one reason we recommend starting with a provisional rather than filing a complete application straight away. We explain the options in capturing improvements during the provisional period.
Step three: an international-type search on the claims
Because our provisionals contain claims, we can ask IP Australia to carry out an optional international-type search during the provisional period. It must be requested within 10 months of filing, and IP Australia aims to report within about six to eight weeks. An examiner searches the prior art against the claims and gives an opinion on novelty and inventive step, using the same standards that apply to international searches under the PCT.
This shows you, early, how an examiner sees the invention. If relevant prior art turns up, we adjust the claims before the complete application is filed, focusing them on the technical features that distinguish your invention. Problems that would otherwise surface in examination, years later and in several countries at once, are dealt with in a single amendment at the cheapest point in the process. We compare this search with a private novelty search in prefiling novelty search vs international-type search.
Step four: carry the search into the PCT
At the 12-month mark, the next step is usually a Patent Cooperation Treaty (PCT) application, which keeps your options open in most countries for a further 18 months. In the PCT application we ask the International Searching Authority to take the earlier international-type search into account. Under the PCT rules, where IP Australia carried out the earlier search and is also the International Searching Authority, it must take those results into account as far as possible.
The PCT examiner then sees the earlier search alongside claims that have already been amended to address it. In our experience, this considerably improves the chances of a clear written opinion on the first attempt. If objections remain, an optional international preliminary examination lets us amend the claims and argue for a favourable report before the national phase. We cover both in how the PCT written opinion and international preliminary examination work.
Step five: national phase with a clear opinion behind you
At around 30 months, you choose the countries where you want protection, and each national office examines the application. The PCT written opinion is not binding on them, but examiners routinely start from it, and in many countries a favourable PCT opinion can also be used to request faster examination under the Patent Prosecution Highway. An application that arrives with a clear opinion is far more likely to be accepted quickly, with fewer rounds of objections, in each country.
What this achieves
No approach can guarantee a patent. The examiner in each country may find different prior art, and patent law differs between jurisdictions. What this process does is move the hard questions to the start, while they are still cheap to answer. The result is a greater likelihood of obtaining protection, and fewer and less costly examination responses across the countries that matter to you.
If you would like to discuss how this approach would apply to your invention, contact Patentec for a free initial consultation. Our article on the difference between a provisional and a complete application is a good place to start if the process is new to you.