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Provisional Patent Application

The provisional patent application is generally the first step in the patent application process, reserving your rights internationally while you test the commercial viability of your invention. Here’s how:

Establishing the international filing date

The provisional patent application, when used as the first filing, performs the most important task of the patent application process which is establishing a filing date for your idea. This is the date at which the idea is recorded against your name and it is also the date against which the newness of your idea will subsequently be tested.

Therefore, you always want to have a filing date before someone else comes up with the idea, or before you publicly disclose or use your idea.

The provisional patent application establishes an international filing date for your idea

In this way, the provisional patent application establishes an international filing date and starts the international patent pending period. Down the track, once you have decided which countries would be of interest, you will obtain patent protection in individual countries wherein these patents in these individual countries will be given the same filing date as the original provisional patent application.

Capturing of improvements

The provisional patent application also allows you to capture improvements to your idea during the provisional period.

For example, you obtain a filing date for each feature or aspect described in your provisional patent specification at the time of filing. For example, your provisional patent specification may describe a widget having 100 aspects. However, if during the provisional patent application period you come up with improvements to the widget, such as an additional 20 aspects or features, it is possible to capture additional aspects too by amending and re-filing the patent specification.

The Provisional Patent application allows you to capture improvements of your idea

Then, when filing the complete application at the end of the provisional patent pending period, you would “claims priority” from both provisional patent applications meaning that the initial 100 aspects of the widget would have the initial filing date where is the additional 20 aspects would have the latter filing date. It is in the swear that patents can have different filing dates for different aspects of the invention.

During the provisional patent pending stage there is no limit to the number of provisional patents that can be filed.

During the provisional patent application stage, when deciding whether or not to file a new provisional patent application to capture improvements, you would generally considers the commercial value of these improvements. If the improvements are commercially valuable, we recommend the immediate filing of the provisional patent application to establish the earliest possible filing date for the improvements. However, for improvements that are less commercially viable could be added into the patent specification at the time of filing a complete application, the slight disadvantage here being the later filing date (i.e. at the time of filing) of the improvements.

The Provisional Patent application is never published

The contents of your provisional patent specification are not published. This is great in keeping your competitors in the dark.

This is great in keeping your competitors in the dark

Publication of the contents of your patent specification only happens 18 months (i.e. 1.5 years) from the initial filing and only if you continue with the patent process by filing a complete patent application at the end of the provisional patent period.

In this way, if you abandon your provisional patent application and do not continue with the process by filing a complete application, the contents of your provisional patent application never become open to public inspection.

The Provisional Patent Disclosure requirements

The disclosure of the provisional patent specification is extremely important because you only obtain a filing date for those features or aspects described in the patent specification – we’ve seen many applicants who have lost rights by self-filing technically deficient patent specifications. This problem has been compounded with the recently enacted “Raising the bar” Patent Act amendments increasing the requisite disclosure requirements of the provisional patent specification.

At Patentec, we prepare thoroughly prepared patent specifications covering a broad technical breadth to establish firm filing dates. By doing so, your patent application has a greater chance of surviving examination and is better placed to capture a greater scope of patent infringement.

If you have an idea that you believe is commercially viable, we highly recommend that you speak to us with regards to preparing a thoroughly prepared provisional patent application which will stand you in good stead for the remainder 20 year life of the patent.