Continuing our deep dive into the influence of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, we now look at the changes made to Provisional Applications and the conflicting result that the Act had on a system originally aimed at saving time and cost to applicants.
Before filing a complete patent application, an applicant can file a provisional application. Unlike a complete application, a provisional application is not examined, does not need to expressly claim what the applicant seeks to protect and is not published. Rather, a provisional application allows an applicant to secure a priority date, while at the same time affording them 12 months to test, develop and assess the viability of their invention.
Prior to the RTB Act, once an applicant had conceived the basis of their invention they could file a provisional application and then go about further defining their invention, including the process for actually working it. The aim being that after 12 months of development, the invention would be fully defined, and a complete application could be filed which would teach how to perform the invention.
For many applicants, this made sense. After all, a provisional application is not published – so why should it need to teach someone how to perform the invention? Further, the preparation of a complete specification can take a lot of time and be expensive. Why incur such a cost if you are still developing your invention?
However, many other jurisdictions had more stringent requirements for securing a priority date. Australian applicants who filed a provisional application in Australia, which would entitle them to a valid priority date here, may not have secured a priority date in other jurisdictions.
Accordingly, the sections of the Patents Act relating to provisional specifications (section 40(1)) and priority dates (section 43(2A)(b)) were changed by the RTB Act. No longer did an invention merely need to be “described”. Now, to secure a priority date, the invention must be disclosed in a provisional specification in a manner that is “clear enough and complete enough” for a skilled person to perform the invention.
The result of this amendment was that the obligation to disclose and enable an invention in a provisional specification was identical to that required for a complete specification. Provisional specifications could no longer describe inventions in a provisional manner.
For many patent attorneys and applicants this did not change much. While it had not been a requirement under Australian law to provide an enabled disclosure of the invention in a provisional application, our sights were often cast beyond Australia. To ensure an applicant had the best chance to secure their priority date oversees, many attorneys were already preparing provisional specifications with the intention to meet a more stringent requirement.
The impact of the change brought by the RTB Act is illustrated in the decision in Grant Fisher v ToolGen Incorporated. In 2012 multiple groups were busy developing a gene editing technology known as “CRISPR”. This technology allowed accurate and easy editing of DNA in mammals and plants and became the subject of the 2020 Nobel Prize in Chemistry. With multiple groups working on the same technology simultaneously, many provisional specifications and scientific publications were filed in 2012 and 2013.
One applicant for a patent relating to the CRISPR technology was ToolGen Incorporated. ToolGen filed several provisional applications in 2012 and 2013, before filing a complete application in October 2013. The first of these provisional applications included a specification which was essentially in the form of a scientific paper which only described specific experiments and was a “relatively early ‘proof of concept’”.
Acceptance of the Australian ToolGen application was opposed, in part on the basis that the claims were not entitled to either of the earliest priority dates because the first two provisional specifications did not enable the invention as ultimately claimed. This was the first significant test of the priority requirements implemented by the RTB Act.
Ultimately, the limited description of the invention in the first and second provisional specifications were considered insufficient to enable the claimed invention as they lacked a clear enough and complete enough disclosure. This determination meant that documents published after the first and second provisional applications were filed became prior art, resulting in the claims lacking novelty and inventiveness. It is likely that this would not have been the outcome had this application been governed by the Patents Act prior to the RTB Act changes.
The intention of the RTB Act was to bring the priority requirements in Australia into line with other major jurisdictions, an aim it achieved. However, this has not been without detriment and cost to applicants. Now, prior to filing a provisional application, an applicant must spend more time, money and effort developing their invention. Additionally, the time and cost of preparing a provisional specification has increased, which for some applicants – particularly those focussed on the Australian market – makes the patent system less affordable and accessible. Undoubtedly, the priority date of more patents and applications will be contested due to the changes introduced by the RTB Act. But, 10 years’ evidence shows that most applicants and practitioners have been able to make it over the higher bar.
 With the exception of the need to disclose the best method of performing the invention.
 Grant Fisher v ToolGen Incorporated  APO 65 at 121
 Grant Fisher v ToolGen Incorporated  APO 65 and 123