The provisional application
A provisional is usually the first step. Filing one with IP Australia establishes an international priority date, which you can claim in Australia and, through the Paris Convention, in most other countries. It also starts a 12-month window during which you can describe your invention as "patent pending".
That window is for commercial decisions. You can test the market, approach investors or licensees, build prototypes and find out whether the invention is worth protecting overseas, all before committing to the much higher cost of international filings. If the invention turns out not to be commercially viable, the provisional simply lapses. It is never published and costs nothing further.
A provisional is not examined and gives you no enforceable rights. The law also does not require it to include claims. As we explain below, though, leaving claims out is a false saving. Our guide on how to file a provisional patent in Australia covers the practical steps.
The complete application
At or before the 12-month mark, you file one or more complete applications claiming priority from the provisional. That might be an Australian standard application, a Patent Cooperation Treaty (PCT) application that keeps your options open in most countries for a further 18 months, or direct filings in particular countries.
A complete application must end with claims defining the invention. It is published about 18 months after the priority date and examined for novelty, inventive step, patentable subject matter, clarity, support and sufficiency. If granted, a standard patent can last up to 20 years from the filing date of the complete application.
Once a complete application is filed, its technical content is effectively fixed. Under section 102 of the Patents Act 1990, you can't later amend it to claim or disclose anything that wasn't in the specification as filed. The provisional period is the last chance to add new technical material, either in further provisionals or when the complete application is prepared. We explain how to choose between the two in capturing improvements during the provisional period.
The "fix it later" myth
The most expensive misconception we see is that a provisional can be a brief outline, with a patent attorney brought in to "fix it up" when the complete application is due. It can't be fixed, because the priority date is not given to the application as a whole. It is decided claim by claim, by asking whether the provisional disclosed the invention of each claim clearly enough and completely enough for a skilled person to perform it.
Anything the attorney adds at the complete stage gets the complete filing date, not the provisional date. If an examiner later decides that a claimed feature wasn't fairly disclosed in the provisional, that claim loses the early date. Prior art published in the gap then counts against it, including articles, competitors' filings and potentially your own product launch. We walk through how that unfolds in the pitfalls of a poorly prepared provisional patent application.
A complete application can add detail, but it can't backdate it. The provisional decides what is protected from day one.
Why we include claims in the provisional
Although the law doesn't require claims in a provisional, we strongly recommend them, and Patentec prepares every provisional in complete specification format: a full technical description supporting a set of typically around 20 claims defining the invention.
Including claims does two things. First, it gives each claimed feature an explicit basis in the provisional, so there is little room to argue later that the claims weren't disclosed at the priority date. Second, it allows the claims to be tested early. With claims in place, you can ask IP Australia to carry out an optional international-type search during the provisional period. An examiner searches the prior art and gives an opinion on whether your claims are new and inventive.
If the search turns up relevant prior art, we can adjust the claims before the complete application is filed, while there is still time to do something about it. When the complete application is a PCT application, we can then ask the International Searching Authority to take the earlier search into account. Where IP Australia carried out both searches, the PCT rules require it to do so as far as possible. With claims already refined in light of that search, the prospects of a clear written opinion at the PCT stage are much better. We explain what that opinion is and why it matters in how the PCT written opinion and international preliminary examination work. We compare this search with a private novelty search in prefiling novelty search vs international-type search.
The two together
The two applications do different jobs. The provisional secures your date and buys time, and the complete application turns that date into enforceable rights. A complete application can only be as strong as the provisional it relies on, so the provisional deserves the same care. We explain how we use the two stages together to reduce uncertainty and examination costs in our approach to patent applications.
If you are deciding how to begin protecting an invention, contact Patentec for a free initial consultation. We'll explain how the provisional and complete stages would work for your invention and what you need to have ready.