Provisional patent application in Australia : procedure, timeline and cost guideline

Provisional patent application in Australia : guideline on procedure, timeline and cost

A provisional patent application in Australia is a temporary application that provides an early filing date for an invention. It establishes “patent pending” status for 12 months. The official fees to file a provisional patent application in Australia range from AUD 110 to AUD 350, depending on the applicant’s circumstances. and attorney fees range from AUD 600 to AUD 1200 or (USD 400 to USD 800)

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When you are at a stage in your research and development work where it can be disclosed on paper although it’s not a final invention, you can prepare a description of the invention as a provisional patent application and submit it to Australian Patent Office to secure the priority date of the invention.

Filing a provisional patent application is a way where you can postpone the entire patent procedure for 12 months at a low initial cost and get time to test the commercial worth of the invention without compromising confidentiality or priority date (crucially important in the patent world).

Here are some facts about provisional patent application that makes it cost effective starting point in protecting your invention: 

  • The low-cost starting point which protects the priority date of your invention
  • It helps in postponing the efforts and costs for going for complete (non-provisional patent application)
  • Gives a window period of 12 months to test the commercial worth of the invention and to decide whether to proceed with a complete patent application
  • It also helps in securing priority date for patent applications to be filed outside Australia

When you complete the required documents and your research work for your invention (anytime within the expiry of 12 months from the filing date of the provisional patent application),  you can file a complete specification. 

Filing the provisional specification is an optional step, if you are at the stage where you have complete information about your invention then you can directly go for complete specification. A provisional application for patent (provisional application) is a Australian national application filed in the Australian Patent Office.

Important things to remember about the provisional patent application:

  • A provisional specification is not a rough draft;
  • it defines the field of invention and also defines the scope of the invention to a certain extent.
  • Even if you file a complete specification later it does not replace the provisional specification, it still remains in the record.
  • The Australian Patent Office accords the filing date and patent application number to the provisional specification received.
  • If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned. 

Things to consider when going for Provisional Patent Application

Provisional patent application

Be careful when writing a provisional application for your invention, writing a provisional application as writing the rough draft of your invention would be a costly mistake you would like to avoid…

It is a scope-defining document:

A provisional application is not a rough draft of your idea or invention, In fact, it defines the scope of your invention !!! So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing the complete patent application) will fail to have the earlier priority date (filing date of provisional application). This means the part of the invention you developed after filing provisional which is outside the scope which is set by a provisional application will not have the advantage of the priority date of a provisional application.

Even if you file a complete specification later it does not replace the provisional specification, it still remains in the record. The patent office allocates the filing date and patent application number to the provisional application received. If the complete specification is not filed within 12 months from the filing date of the provisional application, the patent application is treated as deemed to have been abandoned.

The applicant who has filed a provisional patent application must file a non-provisional patent application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

The description of the invention should not be limiting:

The language used in a patent application plays an important role in defining its scope. While writing description for invention, you should avoid using limiting words like “must-have” “consists” “essential”.  Instead, try to describe elements of the invention with as broader in scope as possible: You can use terms like a “writing device” instead of directly saying “a pen” which would be of limiting the scope and can eliminate other writing devices like a pencil from the scope.

Documents required for filing the provisional application in Australia: 

  • the application as a provisional application for patent;
  • the name(s) of all inventors;
  • inventor residence(s);
  • title of the invention;
  • name and registration number of attorney or agent and docket number (if applicable);
  • correspondence address;

Know this before filing provisional patent application in Australia:

  • Provisional patent applications once filed remain confidential with the patent office they are not examined. Actually, they only serve as a placeholder for your complete (non-provisional) patent application of the invention.
  • It may not be applicable for design-related inventions.
  • It cannot have any benefits of the earlier-filed application.
  • The description in the provisional patent application must be as complete as possible as it will be defining the scope of the invention.
  • Any part (element) in the non-provisional patent application of your invention which is outside the scope of the provisional patent application and you happened to develop in the 12 months time (that is at the time of filing the complete patent application) will fail to have the earlier priority date (filing date of provisional application).
  • To get such an earlier priority date benefit of the provisional patent application the “subject matter” of the invention filed in the non-provisional patent application should have support in the provisional patent application.
  • The provisional patent application will not become a granted patent if the next steps in the procedure for obtaining patent in Australia is not followed by the applicant; this is by no means completion of their responsibility. 

Provisional Patent application cost and procedure in Australia

Costs for drafting and filing a provisional patent application:

here the attorney charges vary to a large extent based on factors like 

  • The complexity of the invention
  • Field of the invention
  • Patent attorneys experience 
  • Attorney fees for Provisional patent application: from AUD 600 to AUD 1200 or (USD 400 to USD 800)
  • Official fees for provisional patent application: AUD 110 to AUD 350 depending on the applicant’s

Cost of drafting Provisional Patent application in Australia:

Simple inventionComplex inventionVery complex invention
AUD 600
or (USD 400)		AUD 800
or (USD 540)		AUD 1200
or (USD 800)

The procedure for filing a provisional patent application:

Step1: Non-disclosure agreement

Generally, patent attorney firms do a non-disclosure agreement with you (inventor) to ensure that the confidentiality of the invention disclosed would be maintained.

Step 2: Sharing Invention Disclosure

In this step you share all the relevant information about the invention to the patent attorney, including as many drawings, flow charts photographs etc… anything and everything which helps in explaining your invention in a better way to the patent attorney should be shared. Most often you will receive something called the ” Invention Disclosure Form ” in which you suppose to write answers to questions to be able to come up with complete invention disclosure of your invention.

Step 3: Drafting provisional patent application

Here based on the information provided in the invention disclosure the patent attorney drafts (writes) a provisional application for patent and gives it to you (inventor) for a review. Based on the review and ensuring the scope of the invention has been well covered in the draft the provisional patent application is filed in the Australian Patent Office and a receipt is generated.

Do I need to hire a Patent attorney for a provisional patent application in Australia?

It is possible to file a provisional patent application in Australian Patent Office without representation by a patent agent or attorney. However, if you choose to go ahead without patent attorneys help in the initial phase of provisional patent filing to cut (save) patent attorney fees, you might face some difficulties as below:

What you can miss if doing it on your own

  • The most common is missing 12 month deadline for going for Non-provisional (complete) patent application.
  • Claims in the complete patent application are not supported by the disclosure in the provisional patent application.
  • Disclosing too much information at a time, in many cases, more than one invention that are not related to the primary invention
  • Sharing information publically that is not protected by provisional disclosure (like additions and improvements to the invention) without considering the scope of the provisional application
  • Treating (wrongfully) provisional patent application as simply a rough draft of the invention and not fully understanding the importance of it. That is
  • failing to disclose the scope of the invention
  • Sufficient disclosure of the invention to be able to be enabling
  • Failing to disclose the Best mode of the invention 

The provisional patent application must disclose the invention to be protected in sufficient details so as to enable a person skilled in the art to practice the invention, also mentioning the best mode of operation, this is based as per Australia patent law, and section 112 where it is described that the provisional patent application is considered to be subject to the same burden as a patent application.

Is filing a provisional patent application at Australian Patent Office is a way to save costs with patents initially? 

Well, the answer is yes !!! if you utilize it in a certain way, it is indeed a low upfront cost option that gives you time to test the true potential of the invention before actually going for the full patent procedure. additionally, your priority date is secured and the confidentiality issue is taken care of.

Here is how going for a provisional patent application makes sense:

If we see a typical life cycle of a patent owner, the most preferred way you get your ROI with the patents is by licensing it to other businesses. The Success in licensing your patent to other businesses lies in how you talk to decision-makers and project the advantages and potential profits by licensing rights for your patented invention. However, instead of going for a complete patent, you can choose to go with a provisional patent application with the Australia patent office.

Advantages of a provisional patent application

Low upfront cost: you end up paying much less for filing a provisional application than filing a complete patent application.

You can write “Patent Pending” status: Although a provisional patent is not actually a patent and it will not be converted to a complete patent application unless you take further steps… You legally can write “Patent Pending” for your invention. (product prototype) upon filing a provisional patent, you have secured the priority date as its filing date, so you need not worry about confidentiality.

Time to let invention Evolve: Filing a complete patent application at very early stage of the invention could be a mistake and it may not protect your invention adequately, so filing provisional application secures your priority date and gives you enough time to work on your invention to the fullest possible potential.

Time to test the commercial potential: Having secured the priority date by filing a provisional application, you can test few things like: 

  • The willingness of other businesses to license your invention then patented
  • Get an understanding of the commercial worth of invention
  • Time to conduct market research and test the commercial potential
  • In effect, you get full 12 months of time to decide whether to move ahead with a complete patent application or not, as during this period you can do extensive market research and find the commercial worth of your invention without worrying about its confidentiality. 

abandon the provisional patent application: (saves you money) In case you happened to find out that the invention for which you already have filed a provisional patent application is not worth going ahead for full patent protections for some reasons like: 

  • The invention is not worth that much commercially
  • No one is willing to buy, license it neither are you willing to produce the invention, etc.

You actually save thousands of rupees, you otherwise would have spent on directly going for a complete patent application, and if at all decided to abandon it in between for some reason.

Becomes granted Patent: (by following the procedure) the provisional patent can become granted patent if the complete patent application is filed within 12 months from the filing date of the provisional patent and the entire patent procedure is followed till the grant of the patent. (Provided the patent application is not rejected by the controller)

Now, the granted patent will have the benefit of an earlier priority date (that is filing date of the provisional patent) as priority date is crucially important in all stages of the patent life cycle, right from the examination stage to grant of patent and even in litigations stage and even while monetizing patent.

Mistakes to avoid in Provisional Application

Be careful when writing a provisional application for your invention.

  • It is a scope-defining document: A provisional application is not a rough draft of your idea or invention. In fact it defines the scope of your invention. So every part (element) of your invention which is outside the scope of the provisional application and you happened to develop in the 12 months time (that is at the time of filing the complete patent application) will fail to have the earlier priority date (filing date of provisional application). This means the part of the invention you developed after filing provisional which is outside the scope which is set by the provisional application will not have the advantage of the priority date of the provisional application.
  • Even if you file a complete application later it does not replace the provisional specification, it still remains in the record. The Australian Patent Office allocates the filing date and patent application number to the provisional application received.
  • If the complete specification is not filed within 12 months from the filing date of provisional specification, the patent application is treated as deemed to have been abandoned.
  • Another mistake would be failing to disclose the scope of the invention.
  • The description of the invention should not be limiting: The language used in a patent application plays an important role in defining its scope: While writing a description for invention, you should avoid using limiting words like “must-have” “consists” “essential” Instead try to describe elements of the invention with as broad scope as possible: You can use terms like a “writing device” instead of directly saying “a pen” which would be of limited the scope and can eliminate other writing devices like a pencil from the scope.
  • publically disclosing parts of invention that are not protected by the provisional specification. This would destroy the novelty of the part of the invention which is not covered in provisional specification 

So, in a way provisional patent application is a way to save costs while protecting your innovative idea meanwhile. If you utilize it in a certain way, it is indeed a low upfront cost option that gives you time to test the true potential of the invention before actually going for the full patent procedure. additionally, your priority date is secured and confidentiality is taken care of.

If you thinking of filing a provisional patent application for your invention and have some questions or need help from a patent professional or patent attorney you can contact here. 

Prasad Karhad
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