Provisional Patent Applications

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FICPI Position Paper

Provisional Patent Applications

16 October 2025

Introduction

FICPI believes that in a continuously developing world economy, innovation should be

rewarded. Such reward should come with little burden on innovators, to allow inventors,

either individual inventors or innovative companies, government institutes and other entities,

working on further innovation and commercialisation thereof. Examples of such reward are

the patent systems worldwide, which provide inventors with patents as a way to control who

can (or cannot) use their inventions and in what way.
National and international patent offices, as government bodies, generally support inventors

by providing information to the general public, on a global and personal level, by providing

comprehensible procedures and by providing their official fees at a reasonable level.
In certain jurisdictions, patent offices provide options for provisional patent applications. Such

patent applications do not necessarily end up as granted patents; rather, this option is

provided with the intention to provide a quick and low-cost start for applying for national,

international or even worldwide patent protection. The filing fees levied by the patent offices

are generally lower than for regular patent applications and the substantive and formal

requirements for the applications are generally fewer or less strict than for regular patent

applications.
As a result, some applicants file provisional patent applications with only a small amount of

information about the invention, to save time and to save cost on drafting a patent

application. The aim of applicants is to file a more elaborate patent application within a year

from filing of the provisional application, with a priority claim based on the provisional

application.
However, in view of certain requirements in the law of different jurisdictions and the

interpretation thereof by courts for a valid priority claim to be recognised in accordance with

the Paris Convention, a provisional patent application with only a small amount of information

detailing the invention may not provide a valid priority claim. Inventors generally file a

provisional application to be able to present their invention to the general public on short

notice.
Such disclosure by presentation of the invention to the public may result in the invention being

made available to the general public, before the full patent application has been filed. If all

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subject-matter of the full patent application is not directly and unambiguously derivable from

the provisional application, or the provisional application lacks sufficient detail to enable the

invention to be practiced without undue experimentation, the priority claim may be, at least

partially, invalid. This may, at least for certain jurisdictions, result in patent protection being

obtained only for the generally narrow disclosure of the provisional patent application and, in

the worst case, no patent protection at all.
Whereas FICPI applauds easily accessible procedures for obtaining patent protection, with

respect to both procedure and cost, we note that not all applicants are aware of the potential

risks of filing provisional patent applications.

FICPI's position

Based on the experience of its members, patent attorneys and trademark attorneys in private

practice, FICPI takes the position that there is room for improvement in providing information

to applicants with respect to the potential risks in relying upon provisional patent applications

as a starting point for effective international patent protection.
First, FICPI believes that applicants need to be informed about the differences in the

requirements for a valid priority right in different jurisdictions, and in particular that such

differences exist and that the requirements for enjoying a right of priority are very strict in

certain jurisdictions. Whilst requirements for patentability may become more or less

harmonised in the course of time, there are currently still significant differences across

jurisdictions with respect to various other substantive and formal matters, including details

for the requirements for a valid priority claim.
Second, FICPI holds that the public is to be informed that failure to understand the general

concept of provisional applications and the various requirements across jurisdictions and

failure to comply with these requirements may lead to a loss of patent rights. For example,

the public should be aware that the priority which may be claimed from a provisional patent

application is based on the extent of the disclosure in the provisional patent application and,

in some jurisdictions, a clear identification in the provisional patent application of the subject

matter that is to be claimed. Moreover, a valid priority claim must be to an applicant’s first

patent application for a given invention or subject matter. Sometimes, an applicant will

abandon a provisional patent application and re-file it with the intention of restarting the time

period for claiming priority. However, the public should be aware that simple abandonment

and re-filing of a provisional patent application may not regenerate the right to claim priority

in respect of that given invention or subject matter.
Furthermore, FICPI finds it important that the public is properly informed that for safely

establishing a priority right that is recognised by as many jurisdictions as possible around the

world, the description and claims of a first patent application are to be drafted in a

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professional way, as completely as is if it were a definitive patent application, to the extent

possible at the moment of filing.
In view of the above, FICPI takes the position that the public is to be informed that while the

official fee for filing a provisional patent application, if available, may be lower than the official

fee for filing a regular patent application, the cost of the drafting a first patent application to

serve as a priority right for patent applications in other jurisdictions is substantially the same

as the drafting of a regular patent application. An important reason for this is that, in order to

benefit from a valid priority claim, the first - provisional - application is to contain essentially

the same information as a subsequent application, aimed for obtaining a patent as broadly as

possible for the invention.
Lastly, FICPI considers it important that applicants be well informed about the issues

referenced above on a continuous basis. Within that framework, FICPI believes that it is

important that national and international patent offices inform and advise potential

applicants, even when representation before such patent office is not mandatory, to retain a

patent attorney for drafting a patent application. This applies to provisional applications as

well as subsequent patent applications, for the reasons set out above.

Conclusion

Whereas FICPI considers any opportunity for applicants to benefit from saving of cost and time

to efficiently safeguard patent protection at an early stage, FICPI greatly values properly

informing applicants on the risks of certain procedures. The options for filing provisional

patent applications are part of those procedures. FICPI does not take a position against such

provisional patent application procedures, but considers it very important that the general

public and future applicants in particular are duly and fully informed about both the

advantages and the disadvantages - including risks - of such procedures. FICPI highly

appreciates the role that government bodies may play in this process of educating applicants

for patents, in order to improve the intellectual property position of both companies and

research institutions in a way that benefits all of society.

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IMPORTANT NOTE:

The views set forth in this paper have been approved by the Executive Committee (ExCo).
The International Federation of Intellectual Property Attorneys (FICPI) is the global

representative body for intellectual property attorneys in private practice. FICPI’s opinions are

based on its members’ experiences with a great diversity of clients having a wide range of

different levels of knowledge, experience and business needs of the IP system.

* * *

The Australian Federation of Intellectual Property Attorneys, FICPI Canada, FICPI Denmark,

Suomen Patenttiasiamiesyhdistys ry, Association de Conseils en Propriété Industrielle (ACPI),

Patentanwaltskammer, Collegio Italiano dei Consulenti in Proprietà Industriale, Japanese

Association of FICPI, Norske Patentingeniørers Forening (NPF), Associaçao Portuguesa dos

Consultores em Propriedade Industrial (ACPI), F.I.C.P.I South Africa, the International

Federation of Intellectual Property Attorneys – Swedish Association, Verband Schweizerischer

Patent und Markenanwälte (VSP) and the British Association of the International Federation

of Intellectual Property Attorneys are members of FICPI.
FICPI has national sections in Argentina, Austria, Brazil, Chile, China, Czech Republic, Greece,

Hungary, India, Ireland, Israel, Malaysia, Mexico, Netherlands, New Zealand, Romania,

Russia*, Singapore, South Korea, Spain, Türkiye and the United States of America, a regional

section covering for the Andean States (Bolivia, Colombia, Ecuador, Perú and Venezuela), and

individual members in a further 42 countries and regions.
*

Membership of the Russian Section in FICPI was suspended on 9 March 2022 by Resolution

EXCO/EB22/RES/001 of FICPI’s Executive Committee in response to Russia’s invasion of Ukraine.

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