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When additional data provides additional headaches

Read time
2  minute read
Date published
30 March 2023
research team

In many jurisdictions, including Australia, it is accepted practice to file a provisional application with enough data to enable the disclosed invention, but to generate further data during the 12-month priority period. Depending on the significance of the further data, one or more intervening provisional applications disclosing the further data may be filed. At the end of the priority period, a PCT application is filed with all provisional applications concatenated. Alternatively, the further data can be incorporated into the PCT application directly, without an intervening provisional application.

But what happens with further data generated after the 12-month priority period and after filing the PCT application?

  1. If the data is novel and inventive, consider filing a new, standalone provisional or non-provisional application.
    It may be worthwhile filing the new application before the original non-provisional application publishes 18 months after its earliest priority date. This should ensure that the original non-provisional application can only be considered for the purpose of determining novelty of the later invention arising from the further data.

  2. If the data is novel, but not inventive, consider filing an application for a patent of addition.

  3. If the data expands on support for the original invention, but does not support a second invention, consider filing a divisional application including the further data, or keeping the further data on file to present to an examiner should it be desirable during examination.

  4. Consider filing a new application (PCT B) disclosing the further data, then file a subsequent new application (PCT C) claiming priority to both the original non-provisional application (PCT A) and the new application disclosing the further data (B). BUT great care should be taken with what subject matter is claimed in the PCT C.

As depicted in the figure below, even though priority is not claimed to the earliest priority date of the original provisional application (Provisional A*), rights remained outstanding when PCT A was filed. If the applicant were to claim in PCT C any subject matter first disclosed in Provisional A*, the effect would be to extend the priority period beyond 12 months, in this example from 12 months to 24 months. This is prohibited by Article 4C(4) of the Paris Convention.

The corollary is that it would be acceptable for the applicant to claim subject matter first disclosed in PCT A, B or C.

Need to know

Of course, there are many permutations of this general example, but the key message is that for further data generated after filing an application, pay close attention to:

  • filing dates of related applications and priority claims;
  • actual priority dates of subject matter disclosed; and
  • actual priority dates of subject matter to be claimed.

In addition to seeking advice from an IP professional as soon as possible, these steps taken together should avoid inadvertently extending a priority claim beyond 12 months by multiple filings.