The Problem with Provisionals

Provisional patent applications were originally made a part of the patent system to assist inventors. The idea was to allow for a less thorough, and hence less expensive, initial filing as a way of recording that an invention had been made, but without the full detail and formality of a regular patent application. Provisionals act as a ‘place holder’ for a year, within which time a regular patent application must be filed, or the protection lapses.

One advantage of filing a provisional application is that it buys time for the applicant to do further research and refine the invention, before the regular patent application is filed. However, this is often more theoretical than real: the application can only protect what is disclosed in it. So if the further work is to produce more examples within the scope of the already filed provisional, that theory works. If the further work finds new uses, changes significant features or isolates a whole new aspect as important, then the provisional will not, and cannot, protect these aspects.

Provisionals do not require a full set of claims to be drafted, and this can save some expense. However, it is important that they do contain at least broadly stated claims. If you do not define your invention yourself by claims, then you are leaving it to a court to later define what it was you disclosed if this arises in any later court proceedings. In some countries, amendment is only possible within the scope of the invention as disclosed, and if you do not have claims to define a broad scope, there is a risk that it will be read narrowly, and result in limited protection.

There is one clear advantage of filing as a provisional, and that is that you effectively get another year of protection in Australia. Patent term in almost all countries is 20 years from filing. In Australia, this runs from the complete application, not the provisional, so in effect you can get the year of the provisional, plus 20 years. Hence, for products where the extra year is very valuable, such as pharmaceuticals and agrichemicals, provisionals are an important tool to maximise the value of the IP.

The law in Australia is currently out of step with our major trading partners. The Patents Act 1990 provides that a provisional only has to describe the invention, not fully describe the invention as is required for a complete application. This means that a lower level of disclosure has been adequate in a provisional to enable a corresponding timely filed complete application to be validly based on the provisional.

This has lead to the idea that you can file a ‘quick and dirty’ provisional, with a minimum of information and at a minimum of expense, and then fix it up with a well drafted complete within the one year period, generally when funding or a licensee can be located. This is seriously flawed strategy, on several levels.

While this sounds helpful, none of our major trading partners – the United States, European Union, Canada, Japan,
China, South Korea – have any kind of comparable provision. In a number of cases in the United States and elsewhere, such a ‘quick and dirty’ provisional has been found to provide an inadequate disclosure and so the initial filing date is lost, often with dire consequences for the patent. You cannot protect what you do not disclose, and so an initial cheap filing is the equivalent of building on poor foundations. No matter what clever (and expensive) strategy you later adopt, you cannot fix the foundations.

This peculiarity of Australian law does no kindness at all to Australian researchers, who may erroneously assume that the law in other countries works in a similar way, and see a ‘quick and dirty’ provisional as a way to save money at the early stage of development. Nothing could be further from the truth – in fact, it will materially reduce the value of the IP in the eyes of licensees and investors, as a weak provisional is essentially an invitation to attack validity of the granted patent.

Very extensive amendments have been proposed in the IP ‘Raising the Bar’ Bill, which has been the subject of
extensive consultations over the past two years, and has been read a first time in the Senate. When the bill is passed and enters into effect, a provisional application will be required to fully describe the invention, in order for a complete application based upon it to validly claim the provisional date. The standard of disclosure will no longer be lower.

In fact, since the amendments once active are likely to be operative 6 months after royal assent, likely some time late next year, it is important to take this into account right now. Any provisional filed now is likely to be completed after the new provisions are operative.

The days when the ‘quick and dirty’ provisional had any application are not just over – this amendment puts the
final nail in the coffin. The quality and value of any patent is directly determined by the quality of the provisional, and there is no role now for anything less than a well drafted provisional.

by Peter Franke

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