What to do after filing a provisional patent application with IP Australia
Filing a provisional patent application in Australia is an important milestone. It secures a priority date for your invention and gives you time to refine the technology and your business strategy.
However, it also starts a 12-month clock. Before that deadline expires, you will need to decide whether to move ahead with a complete patent application in Australia, an international Patent Cooperation Treaty (PCT) application, foreign filings, or to step off the path entirely.
This article sets out practical things to consider and concrete steps to take in the months after filing a provisional patent application, so that by the end of the 12-month period you can make informed, commercially sensible decisions.
1. Understand what your provisional patent application does (and does not) do
A provisional patent application:
✅ Reserves an international filing date (“priority date”) for the invention.
✅ Gives you 12 months to decide whether to proceed with a complete patent application that claims priority from the provisional.
⛔ Never matures into a granted patent
⛔ Does not give you enforceable rights
⏳ Lapses in 12 months.
The key takeaway is that a provisional patent application is the start of the patent application process, not the finish line.
2. Keep developing the invention – but capture improvements properly
Most products and technologies evolve significantly in the year after the first filing. For example:
new features and improvements might be added
designs may change to address manufacturing constraints
many prototypes are often tested and refined
software and interfaces are iterated based on user feedback
Why this matters:
Your provisional application only covers what it discloses.
If you come up with and publicly disclose a new feature that is not covered in your provisional, protection could be compromised.
Public disclosures before filing can destroy or weaken patentability in many jurisdictions.
So what should you do?
In the months after filing your provisional patent application:
Record new ideas, design decisions, test results and significant changes.
Include dates and who was involved.
When a feature feels like a genuine innovation rather than routine engineering, treat it as a potential invention.
Check with your patent attorney before making public disclosures at events and milestones such as:
Product launches
Investor decks
Conference papers or academic publications
Trade shows and demonstrations
Often, the solution is simply to file an updated patent specification so the improved version is properly covered before making public disclosures.
3. Use the 12 months to validate the commercial case
Patents are a commercial tool, not a vanity project. In the year after filing your provisional patent application, it is worth asking some hard questions about the business:
Who will pay for this? 💸
Do you have evidence of real demand (letters of intent, pilots, pre-orders, strong early usage) or only positive feedback?
What problem are you solving? 🧩
Is it a mission-critical pain point or a nice-to-have improvement?
How will you make money? 🤔
One-off product sales, recurring subscriptions, licensing to larger players, or a mix?
Is the scope of your potential patent claims sufficiently broad?🛡
If competitors can easily design around your patent claims, patent protection may not be worth it.
By the time you approach the 12-month deadline, you ideally want a clearer picture of:
whether there is demand for your invention;
where that demand is; and
whether patent protection is likely to support revenue, valuation, or exit prospects.
If the commercial picture has shifted significantly, you may decide to tailor your patent strategy accordingly, change emphasis to different embodiments, or in some cases, abandon patent protection altogether.
4. Identify your key markets – where do you actually need patent protection?
One of the most valuable exercises you can undertake after filing a provisional patent application is to map your key markets, rather than thinking about “worldwide patent protection”.
Questions to work through include:
Where will we sell in the first 3–5 years?
Where are our most important customers likely to be based?
Where will we manufacture or have critical suppliers?
Where are our most significant current or potential competitors located?
It makes little sense to chase patent rights in a long list of countries where:
you are unlikely to sell product,
you have no realistic plan to license, and
enforcement would be commercially impractical.
Conversely, it can be very worthwhile to secure strong patent protection in a small number of markets that:
drive a large portion of your expected revenue, or
are strategically important (for example, United States, Europe, or a key manufacturing country).
By the middle of the provisional year, it is helpful to have at least a working list of priority territories. That list will heavily influence the next stage of your patent filing strategy.
5. Decide on your filing strategy before the 12-month deadline
Before the 12 months are up, you will usually choose one or more of the following options:
File an Australian standard patent application
An Australian standard patent application is typically used when:
Australia is a key or primary market, and/or
you want to progress towards a granted patent in Australia.
File a Patent Cooperation Treaty (PCT) application
A Patent Cooperation Treaty (PCT) application is an international-style application that effectively keeps your options open in many countries for a longer period.
Businesses commonly choose a PCT application when:
🌏 they expect to operate or license in multiple countries (for example, United States, Europe, Japan, China),
⏳ they want more time – typically up to around 30–31 months from the filing date of their first provisional patent application – to refine their commercial plans before committing to national filings, and
🔎 they would like an early international search and opinion on patentability.
It is important to remember that a PCT application:
⛔ does not result in a single “worldwide patent”; it is a procedure, not a right, and
📝 still needs to be followed by national or regional phase entries in each country or region where you ultimately want protection.
File directly in selected foreign countries or regions
In some cases, it may be appropriate to file directly in specific foreign patent offices (for example, the European Patent Office) claiming priority from your provisional, without going through the PCT route.
This can make sense when there are clearly well-defined markets targets that a business is already well-equipped to serve.
6. Manage confidentiality and public communication
A common question after filing a provisional patent application is: “Can we now freely talk about the invention?”
Generally, you can disclose what is already properly described in your provisional application without harming the patentability of those features.
However, new improvements developed after filing may not be covered.
Practical guidelines:
For technical deep-dives with manufacturers, partners or investors, consider non-disclosure agreements (NDAs), especially where the discussion goes beyond what is in the filed documents.
Treat websites, marketing material, conference talks, journal articles, investor presentations and social media as public disclosures.
Check in with your patent attorney before major public announcements is generally inexpensive and can prevent irreversible loss of rights.
7. Sort out ownership, contracts and internal IP processes
The months after filing are a good time to tidy up the legal and internal side of your intellectual property. For example, your Australian patent attorney may guide you to:
Confirm inventors 👤👤👤
Who actually contributed to the inventive concepts? This can matter for validity and for some overseas filings.
Check ownership 🚩
Ensure patents are (or will be) owned by the correct legal entity – often the operating company rather than an individual founder, depending on your structure.
Review employment and contractor agreements 📝
Do they contain appropriate IP assignment and confidentiality clauses?
Are there legacy consultants or collaborators whose rights should be clarified?
Create an internal process for new inventions 🔁
For example, a short form that team members complete when they believe a new invention or significant improvement has been made.
Cleaning up these issues early reduces friction later, particularly before due diligence for investment or acquisition.
8. Plan and budget for the next cost step
Costs typically increase at two stages:
Preparing and filing your complete application(s) at the 12-month mark (Australian standard patent, PCT, and/or foreign filings), and
Later national phase entries and prosecution in foreign patent offices if you go down the PCT route.
To avoid unwelcome surprises:
Ask your patent attorney for indicative costs
Match those cost profiles to your funding and cash-flow plans. For many startups, the PCT and national phase timelines can coincide with funding rounds and product launches.
Reduce costs by distinguishing between filings that are “must-have” compared with “nice-to-have”.
Having a clear budget in mind well before the 12-month deadline allows you to make calm, rational decisions about your patent portfolio rather than rushing last-minute instructions.
9. Example timeline after filing a provisional patent application
Every project is different, but the following outline can give you some insight as to what to expect:
Month 0 – File Australian provisional patent application.
Months 1–3 – Continue technical development and early customer conversations; log improvements; avoid unplanned public disclosures.
Months 3–6 – Test the market, refine your business model, and begin mapping likely key markets and competitors.
Months 6–9 – Shortlist target countries; discuss filing options (Australian standard patent application, PCT application, direct foreign filings) and costs with your patent attorney.
Months 9–12 – Finalise your decision; prepare and file the next-stage application(s) well before the deadline.
You do not need to follow this rigidly, but it illustrates that the best outcomes come when you plan ahead, rather than treating the last month before the deadline as the time to start thinking about strategy.
10. Common pitfalls to avoid
Having advised hundreds of businesses for over a decade, below are some of the most frequent mistakes I’ve seen:
Thinking the provisional patent application is “the patent”.
Letting the 12-month deadline creep up unnoticed.
Failing to protect new improvements.
Diluting resources by spreading filings too thinly across many countries without a strong business case.
Pursuing patents on technologies the business no longer cares about.
Frequently asked questions
What happens if I do nothing after filing a provisional patent application?
If you have publicly disclosed your invention and you do not file at least one complete application claiming priority from your provisional by the 12-month deadline, the provisional will lapse and you will generally lose the ability to obtain valid patent protection for that invention.
Can I safely show my product after filing a provisional patent application?
You can generally show and discuss aspects that are already properly described in your filed application. The risk arises if you have introduced new features that are not yet covered. Before major launches or presentations, check with your patent attorney whether your provisional covers the product you plan to show.
When should I decide whether to file a PCT application?
In many cases, you will want to start the discussion at least 2–4 months before your 12-month deadline. This allows time to refine your patent specification, review commercial progress, identify key markets and obtain accurate costings.
Do I need patents in every country where someone might copy me?
No. Most businesses focus on a small number of commercially important markets – where they expect significant sales or strategic value. Filing everywhere is rarely affordable or necessary; filing nowhere can leave you exposed. The art is in choosing a sensible middle ground.
Next steps
If you have recently filed a provisional patent application, useful next steps include:
Refining your invention and documenting any modifications.
Reviewing your commercial plan and identifying your most important markets.
Chatting with your patent attorney to determine a patent protection strategy that matches your business goals and budget.
With the right planning, the year after filing your provisional patent application can transform a good idea into a well-protected, commercially valuable asset.
