Comparing U.S. And Australian Provisional Patent Applications

Author:Ms Christina Sperry
Profession:Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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...

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