FD1.11 - Priority

Question 1

s5 – Priority date

Answer 1

1) The default priority date of an invention (or any matter) is the filing date.

2) …but the applicant or his predecessor in title can make a declaration claiming one or more earlier relevant applications filed by the applicant or their predecessor in title as a priority document(s), within the allowed periods. If so declared, the priority date of any matter, including any supported invention, is the filing date of the earliest disclosure of that matter in the priority document(s).

2A) a) The allowed period is normally 12 months immediately following the date of filing of the earliest relevant application [* and actually extends over the weekend to the next working day – Paris Convention Art 4C].

2B) However, the applicant can request permission to make a late declaration (i.e. if the application is filed after the priority period has expired) within a further two months [~14 mo],

2C) a) providing the request complies with the rules (use form PF3, within the 2 month period), and
b) he can satisfy the Comptroller that the failure to file on time was unintentional (requires evidence).

3) Where an invention (or other matter) in the application in suit was disclosed in two earlier relevant applications filed by the same applicant or predecessor in title, the second of those shall be disregarded w.r.t. the invention (or matter), unless:
i. it was filed in the same country as the first; and
ii. the first was withdrawn, abandoned or refused, without leaving any rights outstanding, no later than the date of filing the second application; and
iii. the first had not served as a priority application.

4) Priority date for patents are the same as for patent applications.

5) Related matter for the purposes of claiming priority can be from a suitable application from the UK or any convention country.

Question 2

Rules – Declaration

Answer 2

A declaration of priority can be made on filing, or else on PF3 (+ declaration fee) before 16 months from the earliest priority date.
* Provided in this latter case there is no effective request for early publication.
* A declaration must give the application date and the country of filing (as well as application number(s) and a certified copy – R8).
* For divisionals, you cannot add a priority claim that was not in the parent.

Question 3

Rules – Late declaration

Answer 3

• A request for permission to make a late declaration (and the declaration itself) must be made within 2 months after the normal 12-month priority period (12+2 mo) on PF3 (+ declaration fee, + late fee), and accompanied by evidence why the application was not filed on time, or else the Comptroller will set a time limit for filing evidence.
• For divisionals, such a request can be in writing, without evidence; if the application is filed after the 12+2 mo period of the parent, the request can be made on filing.
• Provided there is no effective request for early publication.
• For PCT(GB) applications, such a request can be made up to 1 month after national-phase entry.
• When requesting late, one must declare priority at the same time as filing the request (I.e. there is no 16 mo. option).
• As well as costing more, a late declaration of priority under R6 leaves less time to correct errors in the priority claim (the deadline for this being 16 months from priority), and also prevents the option to file missing matter without re-dating (see s15(7)(a)).

Question 4

Rules – Requirements for filing priority applications

Answer 4

• The applicant must provide the application number and a certified copy of the priority application(s) before 16 months from the earliest priority date, otherwise the declaration will be disregarded w.r.t. that priority application.
• But not required if the application in suit is a PCT(GB) and everything was addressed in the international phase; also a certified copy is not required if the Comptroller already has access.
• If the copy of the priority application (filed under UKPA/EPC/PCT or obtained) is in a language other than English or Welsh, and is relevant to the determination of novelty or inventive step, the Comptroller will set a period to provide:
  o an English translation; or
  o a declaration that the application in suit is a complete translation into English of the priority application;
  otherwise the declaration will be disregarded w.r.t. that priority application

Question 5

Multiple and partial priorities

Answer 5

• A claim may be a fusion of two inventions into a single concept –– Therefore one or both inventions may have priorities, resulting in partial or multiple priority claims.
• If a broad claim encompasses embodiments with different priority dates, it only takes one embodiment being anticipated by prior art for the whole claim to be invalid, even if earlier priority dates exist within the claim scope.
• Similarly, different claims may have different priorities and hence have different prior art citable against them.

Question 6

Valid priority documents

Answer 6

• WTO/WIPO/PCT member patent applications (including US provisionals) and utility models
• As only the (effective) first filing can be used as a priority application, a divisional application or a US continuation application can never be used as a basis for priority.
• Likewise, a later application (e.g. PCT application itself claiming priority) can only serve as the basis for priority for any matter that was added at its time of filing, because otherwise it “shall be disregarded” with respect to the matter that was present in the earlier application.

Question 7

Valid applicants

Answer 7

• The priority application and the application in suit must have been filed by the same applicant or predecessor in title for the priority claim to be valid (therefore, assignment should be done before filing the second application in the name of the new applicant). It’s ok for the later application to have additional applicants than the priority application, but not the other way around (i.e. multiple applicants are considered as a single entity, so must all be co-applicants on the second application unless they have assigned their rights to another of the applicants).

Question 8

Relation of priority to s16 (Publication)

Answer 8

• If an application is published, then loss of a claim to priority will not affect subsequent timelines.
• By contrast, in the PCT changes to priority affect the remaining timeline throughout the international phase. See part 4 of this book for common timelines.

Question 9

Withdrawal of the priority document itself

Answer 9

• Loss of the priority document (e.g. abandoned, lapsed or refused) is OK.
• However, if the document is lost before filing the subsequent application claiming priority, it is advisable to explicitly reserve the right to claim priority from it, e.g. when notifying the Comptroller of withdrawal, or in response to a notification of refusal, to avoid it being interpreted as desiring a full loss of rights as per s5(3).

Question 10

Withdrawal of a priority declaration

Answer 10

• A declaration of priority can be withdrawn in the case of a PCT(GB) before the national phase begins, or for any other GB case, before preparations for publication of the application are complete (c.f. s16, practice notes).

Question 11

s6 – Disclosure of matter, etc., between earlier and later application

Answer 11

1. Any act done between the priority date and the filing date of an application does not affect priority.
   e.g. publications, disclosures, filing of other applications.