In most cases, an inventor first has his or her patent attorney prepare and file a provisional patent application. The provisional patent application is prepared by the patent attorney with a view to the law that governs the validity of patent applications and patents generally. The law governing the validity of patent applications is complex and generally needs the expertise of the patent attorney to be successfully negotiated.
Once filed, the provisional patent application has a term of one year after which it lapses. The patent office does not examine the application and a provisional patent application cannot result in a granted patent. The provisional application is not published and thus there is an opportunity to keep the contents of the provisional patent specification secret if the application lapses.
The true value in a provisional patent application is that subsequently filed complete patent applications can claim priority from the provisional patent application. That is, the complete application which claims priority from a provisional patent application will be given priority over other applications that have a latter priority date.
Consequently, the first person to file a patent application, which may be the provisional patent application, is given the first opportunity to be granted a patent to the invention.
During the one year term of the provisional patent application, the applicant can continue to develop the invention, develop a commercialisation strategy, and obtain any necessary funding to commercialise the invention. If the applicant does not wish to pursue the invention, for example because the necessary commercialisation funding is unavailable, then the application can be allowed to lapse and the contents of specification of the provisional patent application remains secret.
If a complete patent application is not filed by the anniversary of the filing of the provisional application, the latter application claiming priority from the provisional application, then the priority date provided by the provisional application is irretrievably lost.
The Patent Act (1990) sets out certain requirements for a provisional patent application. IP Australia also has some preferences to the format of a provisional patent application.
The most important requirement for a provisional patent application is that the accompanying provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. This can be a difficult to achieve in practice without the proper experience. This requirement reflects a fundamental principle of patents that, in exchange for the exclusive rights given to the patent owner, the patent owner must share with the public the information necessary to make and use the invention. In practice, this means that the skilled person on reading the provisional patent specification must be enabled to achieve what is claimed the invention can do.
The provisional patent application must be accompanied by a patent request which includes details of the one or more inventors, and the applicant who is the owner. There is also an official filing fee that must be paid.