I am quite confused as to the protection that a provisional patent offers in Australia. Does a provisional patent offer the same protection as a complete patent? Is it necessary to have a patent attorney submit a provisional patent or can this be done by someone with little knowledge of patent law (the innovator)? I ask because I would like to spend money sparingly and not hire an attorney just yet, but feel like my interpretation of a provisional patent might be too good to be true.

  • There is no such thing as a provisional patent. Perhaps you mean to refer to a provisional application. – Upnorth Sep 5 '19 at 3:12

In the US, my understanding is that a provisional patent application does not confer exclusive use during the year: it reserves your place by establishing a filing date, so that if a competitor files after your date, then the first to file (in this case you) AND is awarded the patent by the authority is the winner of the IP. It does provide protection for 1 year if the patent is successfully awarded as a non provisional patent.

In the US, it is not required to that an attorney file a patent and the DIY filer is labeled 'pro se'. That being said, there are requirements one must meet to file the non-provisional patent.

That being said, the global community is converging to a single standard and I would not be surprised if the Australian, mirrored the USPTO \ European system.

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  • The biggest problem with provisional applications drafted pro se is that they may lack the necessary "enabling disclosure" to support any claim in the subsequent non-provisional application, rendering them worthless as a priority justification. – Upnorth Sep 5 '19 at 3:20
  • @Upnorth Is there an example of such an outcome? – gatorback Sep 5 '19 at 4:36

A provisional patent offers the same protection but for 1 year only and can never become a complete patent. However, as it is not assessed by the patent office it may be invalid and this could be a defence against your enforcement action.

See http://www.abc.net.au/catapult/askexpert/s1549081.htm

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    In the AU, as in the U.S., while there is a provisional patent application, there is no such thing as a provisional patent. There is also no sense in which any application is "invalid". – George White Mar 7 '18 at 20:02
  • A provisional application offers no protection whatsoever and is not enforceable against anyone anywhere. It merely reserves your priority right in the disclosed invention, in case you file a non-provisional application within the one-year time limit and someone else filed an application for "the same invention" after your provisional filing date. – Upnorth Sep 5 '19 at 3:17

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