Turning a provisional application into a complete application - getting the most out of the 12 month convention period
In brief: Lawyer Garen Holopikian discusses the importance of filing a provisional specification for an invention, and outlines what to do during the 12 month convention period in order to enhance the chances of a patent being granted and to commercially exploit the patent.
Filing the provisional specification
International convention allows inventors to file a provisional specification when an invention has been identified. A complete specification must then be filed within 12 months. When used properly, this 12 month period can maximise ultimate patent protection and the commercial potential of an invention.
The provisional specification forms the basis for setting the priority date of the invention. Consequently it must describe the invention. Many of the statutory requirements for a complete specification, however, do not need to be met in a provisional specification - for example there is no need to describe the invention fully (including the best method known to the applicant of performing the invention), or provide claims.
The provisional specification must, however, provide a "real and reasonably clear disclosure" of an invention ultimately claimed in a complete specification (often described as being fairly based, or 'fair basis'). If not, the claims in the complete specification may not be entitled to the priority date established by the provisional application and may well be invalid. Accordingly, a provisional specification should be as comprehensive as possible, preferably having the same drafting style as a complete specification. Therefore, to enhance the chances of the patent being granted and of being valid, the provisional specification should be drafted by an experienced patent attorney.
What to do during the 12 month period
Once a provisional application has been filed, it is critical to consider and/or act upon the following matters during the 12 month period following the filing date of the provisional:
- Obtain further support for the invention which may be required to assist in describing the invention fully in the complete application. This may include conducting further experiments .
- Inform the patent attorney of any developments or improvements in the invention before the invention is used or published. This allows the attorney to determine whether the developments or improvements are adequately covered by the existing provisional application. If a development or improvement is not covered, then an assessment should be made whether to file another provisional application for the development or improvement. If another provisional application is filed, then claim(s) to that development or improvement will have a priority date of the filing date of that later provisional application. All provisional application(s) filed during the 12 month period can be combined into a single complete application: giving the complete application a number of priority dates. However, if a development or improvement is not covered by the original provisional application and is only included in the complete specification at the end of the 12 month period, then a claim(s) to the development or improvement will have a priority date of the filing date of the complete application. If the development or improvement has been used or published prior to the filing date of the complete specification, then any claim(s) to that development or improvement will be invalid as it has been prior published.
- Record all inventors and, if necessary, have the inventors assign any rights to the invention to the organisation.
- Periodically review the provisional specification to ensure that the invention is being developed in a timely fashion.
- Assess the commercial viability of the invention before incurring any further expense associated with preparing and filing a complete application. If the invention is not commercially viable or falls outside the business plan of the organisation, then the provisional application can be allowed to lapse at the end of the 12 month period without being published. Alternatively, consideration can be given to licensing or selling the invention.
- Conduct searches to ascertain the patentability and/or scope of protection likely to be available for the invention. If the invention is to be exploited, then an infringement search should also be carried out in the relevant country to determine whether exploitation will infringe third party rights. A granted patent only allows the patentee to stop others exploiting its invention; it does not give the patentee freedom to exploit the invention without considering third party rights.
- Determine the country/region in which patent protection is required. Patent protection should be sought in countries where the expected sales figures or licence royalty fees render it commercially viable to incur the costs associated with patenting the invention. The ability to enforce a patent varies depending on the country and can also be a factor which might influence the decision of where to seek patent protection. Irrespective of the above factors, it might still be pertinent to seek a patent with a view to deterring a potential competitor from exploiting the invention in that country.
- Decide whether to publish the invention prior to filing a complete application. Early publication may assist in attracting the attention of potential licensees or sources of funding at an early stage. Publication may discourage others from working in the same area or, alternatively, provide an early signal to competitors which could be used to a competitor's advantage. If, however, there has not been sufficient time to develop the invention during the 12 month period, early publication would prevent re-filing the provisional application.
In summary, the 12 month convention period following the filing of a
provisional application is an important period that should be used to maximise
ultimate patent protection and commercial potential of an invention.
IP law update