8.11.2 Priority Date Issues Specific to Associated Applications (Priority Document is a Provisional)

Also in this Chapter:

• 8.11.1 Priority Date of Claims​​​​​​​

• 8.11.3 Priority Date Issues Specific to Convention Applications

• 8.11.4 Priority Date Issues Relating to Amended Claims

Key Legislation:

Patents Act:

• s37 Complete application may be treated as provisional  

Patents Regulations:

• reg 3.12 What this Division is about

A complete application may be associated with one or more provisional applications, including provisional applications arising from a request under s37 to treat a complete application as a provisional. For the purpose of determining a priority date, an associated provisional application is treated as a priority document (reg 3.12(2)).

A complete application can validly claim priority from both an associated provisional application, and from a basic application. The relevant priority date is determined in the same manner as for an application having a plurality of basic applications, or a plurality of provisional applications.

Case Law

The purpose of a provisional specification was summarised by Lockhart J in Anaesthetic Supplies Pty Ltd v Rescare Ltd 28 IPR 383 at 401:

"All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting the inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional".

Lockhart J also referred to the fifth edition of Blanco White's Patents for Inventions, 1983, at paragraph 2-209:

"It should be noted that the question of "fair basing" upon a provisional specification is not altogether analogous to that of "fair basing" upon a complete specification....It has always been considered legitimate to develop an invention to some extent after filing a provisional specification, and the expression "fairly based" in the present context allows for such development."

In the same case, when discussing the question of fair basing on a provisional specification, Sheppard J stated:

"It is sufficient to say that a degree of latitude is afforded to the construction of provisional specifications which is not available when a complete specification is being construed."

Decisions such as CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 and Leonardis v Sartas (No. 1) 35 IPR 23 have dealt with fair basing on a provisional specification by determining if there has been a real and reasonably clear disclosure of the claimed features in the provisional specification.

In Leonardis v Sartas (supra), the court considered the “Mond Nickel Rules” when determining if there had been a real and reasonably clear disclosure.