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2.11.10A Provisional Specifications

Date Published

Note: The information in this part only applies to provisional applications filed on or after 15 April 2013.  For all other provisional applications, see 2.11.10 Provisional Specifications.

Section 45 does not specifically require examiners to report on a provisional specification.  However, reference to, or analysis of, the provisional specification may be required in connection with the following matters:

Section 45(1)(b)

The priority date provisions set out in reg 3.13C in relation to provisional specifications are relevant where either the case under examination, or possible citations, or both, have been associated with a provisional specification.  If the priority date becomes important during examination, examiners should check the patent request of the complete application to confirm that the provisional is identified and contains a statement to the effect that the applications are associated (sec 5).

Amendment of Provisional Specifications

A provisional specification may be amended, provided the amendment does not result in the specification claiming or disclosing matter that extends beyond that disclosed in the following documents taken together (reg 10.3(1)):

  • the provisional specification as filed;
  • an abstract that was filed with the provisional specification;
  • a missing part of the specification that was incorporated into the specification under reg 3.5A.  

Thus, an amendment to the specification to insert text from a document that was explicitly incorporated by reference would be allowable.  Similarly, amendments that are in the category of obvious mistakes, or formatting issues (such as pagination and line numbering) are also allowable.

However, an amendment that results in the inclusion of matter that extends beyond the disclosure of the documents listed above would not be allowable.  Similarly, a change in punctuation that extended the disclosure (e.g. hose clamp compared with hose, clamp) would not be allowable.

See also:

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