One of the key roles of a provisional patent application is the establishment of a priority date, which is the patentee’s earliest claimed filing date for his patent. The provisional application allows the applicant to file a subsequent complete patent application within 12 months of the filing date of the provisional application, with the complete application having an effective priority date being the same as the filing date of the provisional application.
The priority date is pivotal in determining what is prior art or prior disclosure for a patent application, which may include the patentee’s own disclosure of the invention. The priority date can thus determine whether a patent is valid or invalid for lack of novelty or an inventive step, or whether an alleged infringing act has in fact occurred prior to the priority date of the patent and is thus not an infringement.
The claims in a complete application however are only entitled to the priority date of the provisional application if the claims are “fairly based” on matter disclosed in the provisional specification. That is, the provisional patent specification must provide sufficient support for the scope of the (broad) claims of a complete application. Otherwise, the claims in the complete application will not be entitled to the filing date of the provisional application, and will have the complete application filing date as their priority date. As the complete application is generally filed close to 12 months after the provisional application, this can be a significant loss of a priority period, within which time prior disclosure or use may occur which may invalidate the patent or allow a potential infringement to not be captured.
At Baxter IP, we always draft our patent specifications for our clients’ provisional patent applications with a full set of claims. This is not a legal requirement for a provisional patent application in Australia and we do so at no additional cost to our clients. Other firms generally do not include a set of claims in their provisional application specifications as it involves substantial time and effort, or they charge a substantial additional cost for doing so.
We believe having a full set of claims in a provisional specification provides many advantages. These include:
- A full set of claims directs and focuses the drafting of the rest of the specification to provide full support for the broadest features being claimed for the client;
- It provides more certainty as to the entitlement of claims of the associated complete application to the priority date of the provisional application, particularly if prior art or a potential infringement falls between the filing dates of the provisional and complete patent applications;
- It provides the client with coverage for embodiments and variations that might not otherwise have been considered; and
- Our clients save about $2,000 in the preparation of the subsequent complete patent specification as the complete patent specification will be able to be prepared in less time.
There have cases where granted patents have been held invalid or potential patent infringement was not captured, as the provisional specification was deemed as not supporting the broad features claimed in the complete application.
Another unique Baxter IP approach is that we provide statements of advantages provided by each feature claimed. Such statements assist in the prosecution of our clients’ patent applications as Examiners can readily identify the advantages provided by each feature and how it contributes to the invention’s inventive step.
At Baxter IP, we provide these services at no additional cost to our clients. It is one of the key services that distinguishes our firm and provides value for our clients.
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