5.6.3.4 Provisional Specification – Examination

Also in this Chapter:

• 5.6.3.1 Consideration of Amendments made prior to Examination 
• ​​​​​​​5.6.3.2 Claims directed to a single invention (Unity)
• 5.6.3.3 Omnibus claims – references to the descriptions or drawings

Key Legislation:

Patents Act:

• s38 Time for making complete application
• s43 Priority dates
• s45 Examination  
• s104 Amendments by applicants and patentees  
• s223 Extensions of time  

Patents Regulations: ​​​​​​​

• reg 3.10 Prescribed period: making of complete applications
• reg 3.5A Filing date: incomplete specifications
• reg 3.13C Priority date for complete application associated with provisional application
• reg 10.3 Amendments not allowable for other documents

Related Chapters:

• ​​​​​​​​​​​​​​5.6.1.1 Priority Dates and Filing Dates
• 5.6.5.2 Whole of Contents​​​​​​​
• 6.1.11.1 Categorising the Citations​​​​​​​
• 6.1.12.5.2 Citation Category

On this page

• Priority date validity
  • ​​​​​​​​​​​​​​Time limit for association
• Complete Application Treated as a Provisional
• Amendment of 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.

Priority date validity

Pursuant to reg 3.13C, in order for claims in the complete specification to derive a priority date from the provisional specification(s), the provisional specification(s) must provide a sufficiently clear enough and complete enough disclosure of the claimed invention such that it can be performed by a person skilled in the relevant art.

The priority date of a claim is always a question of fact. Where none of the claims in a complete specification are sufficiently enabled by matter disclosed in the provisional specification(s), examiners should check whether the provisional application has been correctly identified (s5). If there is no error in the patent request regarding the provisional details, the complete application may proceed.  However, any adverse report should note that none of the claims are entitled to derive their priority date from the provisional application.​​​​​​​​​​​​​​

Note: A provisional application is an internal priority document analogous to a basic application. Accordingly, a Convention application may also be associated with a provisional application.

Time limit for association

In general, a complete application can only be associated with a provisional application if the complete is filed within 12 months of the filing of the provisional application (s38 together with reg 3.10).

However, if the complete is filed outside of this period, an extension of time under s223 is required if the complete is to be associated with the provisional application.

Complete Application Treated as a Provisional

Under s37, an applicant may request that a complete application be treated as a provisional application.  Such requests are handled by CEG.  ​​​​​​​

If examiners receive a case for examination containing a request under s37 which has not been actioned, the matter should be referred to CEG.  

It is not necessary for a request under s37 to include a s104 request to amend the patent request. Under s37(4), once the request has been processed, the complete application is to be taken for the purposes of the Act to be and to have always been a provisional application.  Where the original patent request stated that the complete application was associated with a provisional, or was a divisional, an additional or a Convention application, this information will in general no longer be relevant.  

However, if circumstances arise in which that information could potentially be relevant, an amendment of the patent request may be required.

The question of priority dates of any claims is determined by the actual dates on which the specifications were filed and not the date on which the complete application is treated as a provisional application.  Priority dates are governed by s43.

The originally filed complete specification which is to be treated as a provisional specification will not be examined, except where examination has been requested and an examination report issued prior to a request under s37.​​​​​​​

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.