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Provisional patent applications - first steps

The patent system is complex and there are many different strategies that you can adopt to secure protection in the territories that you are interested in commercially. In many cases, however, the recommended first step is to file a provisional patent application for your invention in Australia.

Once filed, the provisional application provides you with a ‘priority date’ for your invention that is valid in almost all major patent jurisdictions. This is the date at which your invention’s validity will subsequently be tested.

Filing a provisional application has many advantages:

1. It buys you more time

Once filed, you can delay taking any further steps with the patenting process for up to 12 months. You can use this time to test and improve your invention and evaluate its commercial viability. You may, for example, want to start marketing and selling your product or speak to potential customers, suppliers, partners or investors. Any disclosures of the invention described in your application during this period will not affect your subsequent ability to obtain patent protection for it.

One or more ‘complete’ patent applications based on your provisional will need to be filed before the end of the 12 month period.

2. It keeps your options open

There are usually various paths that you can take to secure patent protection in each of your territories of interest. You may, for example, decide to file individual complete patent applications in each territory before the 12 month deadline. Alternatively, you may decide to file one or more regional applications (e.g., a European patent application) or an international PCT patent application.

Filing a provisional application reserves you the right to pursue any of these options.

3. It defers patenting costs

Filing a provisional application also pushes out the costs associated with filing and prosecuting complete patent applications by a further 12 months.

4. Your invention is not published

Once filed, the specification filed with your provisional application is not published by the Australian Patent Office (IP Australia). This allows you to keep your invention hidden from the eyes of competitors should you want to for strategic reasons.

If you decide not to file any complete applications by the end of the initial 12 month period, then the specification will never be published. This may allow you to keep your invention protected as a trade secret.

5. You can incorporate improvements into the complete(s)

If you conceive any improvements to your invention during the initial 12 month period, then provided that you keep these confidential you may incorporate them into each of the complete application(s) subsequently filed. Provisional applications are, therefore, especially beneficial if you are at an early stage with your product R&D.

6. International type search

Filing a provisional application also entitles you to request IP Australia to carry out an international-type search for the invention described in your application. This is broadly equivalent to the search that IP Australia initially undertakes when an international (PCT) patent application is filed. The results of this search may reveal prior art that you were not previously aware of and can help you decide whether and how to continue with the patenting process.


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