It is common for the first application for a patent to be a provisional patent application. The aim of a provisional is to establish a priority date for the invention which may be used in subsequent applications.

A patent cannot be granted from a provisional application and it is necessary to file an application for a standard or innovation patent with a “complete” specification within 12 months of filing the provisional application, otherwise any patent rights derived from the provisional application will not be transferred to the subsequent application.

An application for a standard or innovation patent can be made more than 12 months after the provisional application but it cannot claim priority from the provisional application. If it is decided not to proceed with an application for a standard or innovation patent, no action or additional expense is necessary. If a provisional application lapses and the invention has not been disclosed to the public, it is possible to file a new application for the invention that can result in a valid patent. The new application cannot claim benefit of the earlier, lapsed application. The new application may be a provisional application or for a standard or innovation patent.

If a provisional application is initially filed, when filing an application for a standard or innovation patent, any modifications made to the invention after filing of the provisional application may be incorporated into the complete specification. Once the application for a standard or innovation patent has been filed it is not possible to add new matter to that complete specification. Depending on the nature of any new matter added before filing, that new matter may be entitled to the filing date of the provisional application as its priority date. However, if it is significantly different to the original disclosure, the new matter may only be entitled to the filing date of the complete specification as its priority date. As such, major changes may require filing of one or more separate provisional applications before the public disclosure of the relevant information. Multiple provisional applications may, in effect, be combined into a single complete specification filed with an application for a standard or innovation patent.

It is not mandatory to file a provisional application as the first application. If one wishes, one can file an application for a standard or innovation patent as the first application. Whilst this avoids time and cost penalties of filing a provisional application, it is only recommended if the invention is fully or substantially fully developed and no changes are envisaged. If the invention is at an early stage, we recommend filing a provisional application.