A Brisbane robotics founder demonstrates a working prototype at a university industry showcase in late October. Two hundred people in the room, five of them from a competing consortium. He files a provisional application in mid-November, spends the next eleven months iterating the hardware, and files a PCT application designating twenty jurisdictions on the last business day before the twelve-month anniversary. In September the following year an examiner in the European Regional Phase cites his own showcase demonstration as prior art. The Australian file survives on the section 24(1)(a) grace period. The European file does not — the EPO grace period is six months for a very narrow set of disclosures and does not cover a public demonstration. The company has spent $52,000 on PCT and search fees for a European filing that was doomed from the day it left the room in Brisbane, and the founder discovers this two years after he thought he had “protected” the invention.
That is the ordinary shape of an Australian startup patent problem. The Australian filing system is generous. The Paris Convention priority mechanism it feeds is unforgiving. And the PCT — the international overlay founders reach for because “we might want to sell into the US eventually” — is not a patent. It is a procedural device that buys time, and time only.
The Provisional Application — What It Is, and What It Isn’t
Under section 29 of the Patents Act 1990 (Cth), an application for a patent may be filed as either a provisional application (accompanied by a provisional specification) or a complete application (accompanied by a complete specification). The filing fee is $110 for online lodgement with IP Australia. There is no examination, no publication, no enforceable right and no grant.
What the provisional does — and the only thing it does — is establish a priority date under section 43 for each claim of a later complete or PCT application, provided that later application is filed within twelve months and its claims are “fairly based on” (post-Raising the Bar, “disclosed in”) the provisional specification. Everything in your later international portfolio inherits that date. Everything outside the provisional does not.
Two consequences follow that founders regularly underestimate:
- A thin provisional is a thin priority date. IP Australia and every downstream office treat priority claim-by-claim. If your November provisional describes the mechanical claim and your April refinement adds the software-control claim, the software claim gets its priority date from the April refinement — not the November provisional — even though both are filed within the twelve-month window. Post-Raising the Bar (in force since 15 April 2013), the disclosure test is closer to the European “clear and unambiguous” standard than the pre-2013 “fair basis” test, and thin provisionals fail it routinely.
- The provisional is never seen by an examiner unless a complete or PCT application is filed within twelve months. If nothing is filed by the anniversary, the provisional lapses under section 142(2)(d) and Reg 3.11, the priority date is lost, and any public disclosure that occurred between the provisional filing and the anniversary is now unrestricted prior art against a fresh filing.
The disciplined pattern is to draft the provisional as though it were the complete — full support for every claim you plan to prosecute, a wide description that covers foreseeable variants, and enough drawings and worked examples to defend a narrow amendment if the search reveals a problem.
The 12-Month Priority Window
The twelve-month window comes from the Paris Convention for the Protection of Industrial Property. It is the mechanism by which a complete or PCT application filed anywhere in the world within twelve months of the Australian provisional is treated, for novelty and inventive-step purposes, as if it were filed on the provisional date.
Three practical points sit on top of that framework:
- The clock runs from the earliest priority claim. A founder who files a first provisional in November and a second “refinement” provisional in April can claim priority from either — but the twelve-month PCT deadline runs from the earliest one you rely on. Reset the clock by abandoning the November provisional (an active decision under Reg 3.11B), or accept that the second filing’s window is running off the November date for any claim already disclosed there.
- Missed deadlines are rarely rescued. The PCT provides a limited “restoration of the right of priority” pathway under Rule 26bis.3 where the delay was unintentional or occurred despite due care, but Australian designations under Rule 49ter.1 accept only the “due care” standard, which is high. Missing the twelve-month deadline is functionally terminal for the priority claim.
- Public disclosure before the priority date is prior art almost everywhere. Australia’s section 24 grace period runs twelve months and is comparatively generous. The US grace period is twelve months but narrower. The European, Chinese and most Asian grace periods are six months and largely limited to disclosures at officially recognised international exhibitions or unauthorised third-party disclosures. If the invention needs to be patentable in Europe or China, treat the Australian grace period as unavailable and file before any public disclosure.
The PCT — What the “International Patent” Actually Is
There is no such thing as an international patent. The Patent Cooperation Treaty, administered by WIPO and enacted in Australia through Chapter 8 of the Patents Act and the Patents Regulations, is a procedural extension. A single PCT application filed within twelve months of the provisional is treated as a filing in each of the 158 PCT contracting states, and postpones the decision on which national jurisdictions to actually enter until the “national phase” deadline — normally 30 or 31 months from the earliest priority date (Australia is 31 months under Reg 3.5AC).
For a startup, three features of the PCT matter:
- It buys time, not rights. The PCT publishes at 18 months, produces an International Search Report and Written Opinion around 16 months, and gives the applicant a strategic window between 18 and 30 months to decide which jurisdictions to actually enter. Rights are only granted through national or regional prosecution after entry.
- The International Search Authority (ISA) choice matters. Australian applicants have traditionally been able to designate IP Australia, the Korean Intellectual Property Office (KIPO) or the Rospatent office as ISA. From 1 March 2026, a two-year pilot programme with the European Patent Office as ISA and IPEA is open to Australian PCT applicants — a meaningful upgrade for startups whose commercial target market is Europe, because a favourable EPO search at the international phase carries substantial weight at the eventual EPO regional entry. The EPO fee is higher than IP Australia’s search fee but frontloads the European examination signal.
- National-phase entry is where the money is. The PCT filing fee is comparatively modest — under $3,000 all-in for a small-entity Australian applicant designating all PCT states. National-phase entry into a spread of jurisdictions is not: US, EPO (validated in 5–8 countries), China, Japan, Korea, Canada, India as a typical seven-territory footprint routinely runs $60,000–$90,000 in translation, agent and official fees at entry, with prosecution and grant costs on top over the following 3–5 years.
The National-Phase Decision
At month 30, a startup that filed a provisional in Australia, followed by a PCT at month 12, must decide which of the 158 PCT states to actually enter. The default founder impulse is to enter everywhere the round mentioned. The disciplined answer is to enter only where either commercial activity is underway or credibly imminent within 3–5 years, or the jurisdiction is a strategic defensive filing to prevent a competitor from operating there.
The financial constraint is straightforward: each national-phase entry commits the company to translation costs (China, Japan, Korea, Europe non-English), local agent fees, and a stream of maintenance annuities that persist to the end of the 20-year patent term. A US-plus-EPO-plus-Australia footprint (with Japan added if the invention is hardware) covers roughly 70% of global VC-backed enterprise buyer spend for most B2B startups, at 20–30% of the cost of a “file everywhere” approach.
Software and Manner of Manufacture
Australian software patentability is narrower after Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646 and Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267. The current test asks whether the claimed invention involves a “manner of manufacture” — a genuine technical contribution, not merely the application of a business method or abstract idea using generic computer implementation. A startup drafting a provisional for a software-implemented invention should ensure the specification describes a specific technical problem, a technical solution and a technical effect — not just a workflow rendered in code. The 2025 Federal Court decision in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3) [2025] FCA continues to apply the Rokt framework and reinforces that specification drafting quality is now determinative for software claims in a way it was not before 2019.
The Trade-Secret Alternative
Not every startup invention should be patented. Filing publishes the invention at 18 months regardless of whether protection ultimately issues. For inventions whose commercial life is short, whose value depends on undetectable operation, or which cannot practicably be enforced against infringers (many machine-learning training procedures, most cloud-side data-pipeline optimisations), trade-secret protection under confidentiality agreements and the Corporations Act directors’ duties framework often outperforms patent filing on both cost and risk. Patents work best where the invention is detectable in the product, defendable in litigation and durable across the 20-year term.
The Bottom Line
The founders who convert R&D into defensible international IP treat the provisional as the substantive filing it should be, not a placeholder — they draft to the standard the eventual complete specification will need, file before any public disclosure that matters in Europe or Asia, use the twelve-month window to raise capital and sharpen the claim set, and treat the PCT as a strategic option rather than a commitment. At month 30 they enter national phase in the three-to-five jurisdictions their commercial plan actually supports, decline the rest without apology, and preserve budget for prosecution and enforcement rather than filing. The startups that get this wrong — the demo-day-first-provisional-later founders, the “file everywhere” nationally-entered portfolios, the thin provisionals that fail to support the eventual claims — discover, usually during Series B diligence, that a filing receipt is not the same thing as a patent.
Viridian Lawyers advises Australian founders, technology companies and investors on patent strategy, provisional and PCT filing programs, national-phase entry decisions, freedom-to-operate analysis, and IP diligence through capital-raise and M&A processes. If you are scoping a provisional filing, evaluating a PCT national-phase decision, or reviewing an existing patent portfolio, get in touch.
