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8.7.7 Complete Applications Associated with Provisional Applications

Date Published

Key Legislation:

Patents Act:

  • s38 Time for making complete application
  • s223 Extensions of time

Patents Regulations:

  • reg 3.10 Prescribed period: making of complete applications
  • reg 3.12 What this Division is about

Related Chapters:

  • Inclusion of References

A complete application associated with one or more provisional applications is an independent application which is subject to examination. It must be self-contained and cannot depend on the provisional specification(s) for its sufficiency (other than cross-references; see Inclusion of References). The text of the complete specification may include new matter, over and above what was disclosed in the provisional specification(s) and conversely, not all material included in the provisional specification(s) must necessarily be repeated in the complete specification.  However, pursuant to reg 3.12, in order for claims in the complete specification to derive a priority date from the provisional specification(s), the claims must be fairly based on matter disclosed in the provisional specification(s).

The priority date of a claim is always a question of fact. Where none of the claims in a complete specification are fairly based on matter disclosed in the provisional specification(s), examiners should check whether the provisional application has been correctly identified. 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.

Historical Note

The terms ‘provisional’ and ‘complete’ derive from the manner in which applications were made under the 1903 and 1952 Acts. Under those Acts, an application for a patent was initially accompanied by a provisional specification which was not required to have claims, or a best method of performance of the invention. Subsequently a ‘complete’ specification, i.e. a specification that contained a full description and claims, was filed to ‘complete’ the application. However, the application remained the same (i.e. no new request form was required), even though a new application number was assigned and a new case file created with all of the documents from the original application transferred to the new file. Prior to 1970, the application number for both the application with a provisional specification, and the completed application with a complete specification, were part of the 5-figure application series. In 1970, a number series specific to applications with provisional specifications was introduced (PXnnnn), which remained in place until 2003. As the filing of a complete specification to complete an application did not constitute a new application, the 1903 and 1952 Acts included the concepts of ‘cognates’ (for combining the disclosures of two or more applications with provisional specifications), ‘decognation’ (for separating inappropriately cognated applications) and for divisional applications derived from a provisional specification.

The 1990 Act changed the nature of provisionals, by making them applications in their own right, i.e. they became a stand-alone internal priority document. Complete applications could claim priority from such applications in the same manner as claiming priority from a basic application, with the one difference being that the provisional application must not have lapsed when the complete application was filed. Concepts of cognates, and of divisionals based on the provisional specification, ceased with the 1990 Act.

Amended Reasons

Amended Reason Date Amended
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