The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application. The U.S. provisional patent system and the Australian provisional patent system each allow applicants to secure a filing (priority) date with the provisional application for non-provisional application(s) to be filed within one year, and each system allows the provisional application to be filed in non-traditional patent form, i.e., without conforming to the claim, organization, and formality requirements of non-provisional applications. There are, however, advantages and disadvantages to filing a provisional application in one country versus the other. Read on for considerations that may help you decide where to file!
Prior Art Search
- U.S.: No search of the claims or the application’s subject matter is available.
- Australia: An applicant can request an International Type Search (ITS) searching the claims or searching subject matter identified in a search statement submitted with the request. A report is then provided listing relevant prior art – no opinion is provided. Search results take about six weeks from the request. The ITS provides a valuable opportunity for the applicant to evaluate the patentability of the claims and/or the searched subject matter during the pendency of the provisional application and thus before committing the time, effort, and funds required to prepare and file non-provisional patent application(s). The ITS request requires payment of a search fee of AU$2200, with a partial refund available if a PCT application is subsequently filed claiming priority to the provisional application and the Australian Patent Office can use the material found in the search.
- U.S.: A provisional application is secret unless an application is later filed claiming priority to the provisional application.
- Australia: A provisional application’s invention title and applicant name are published in the Australian Official Journal of Patents at filing. A remainder of the provisional application is secret unless an application is later filed claiming priority to the provisional application. Additionally, if an ITS was requested, the search results are secret unless an application is later filed claiming priority to the provisional application.
- U.S.: Provisional application filing fees vary based on the applicant’s entity status: US$260 for large entities, US$130 for small entities, and US$65 for micro entities. The filing fee is relatively small, but it is due at filing.
- Australia: Provisional applications have a filing fee of AU$110, with AU$100 additionally due for applications not filed electronically. The fee can be paid after the date of filing within a response period of two months from the date the patent office sends a fees due notice to the applicant. Provisional applications may thus be filed for a relatively small filing fee and potentially for no filing fee should the fee never be paid (in which case the application would become abandoned).