13) Priority Flashcards
What are the conditions for a subsequent app to act as a first?
Subsequent app:
1) Must be filed in the same country
First app:
2) Must not have been published before
3) Must have been withdrawn LNRO
4) Must not have served as priority-forming application
What is the priority period for a patent app? Contrast with designs.
Priority period for:
1. Patents = 12M
2. Designs= 6M
What type of application can a Patent application claim priority from?
- Another patent application (12M)
- Utility Model
- Utility certificate
NB. Not a design application!
What type of application can a Design application claim priority from?
- An earlier design application (6M)
- A patent application
Can additional applicants be named on a priority-claiming application?
Yes
NB. The requirement is for ALL applicants named on the Priority-forming application to be named on the Priority-claiming application; however, additional applicants can be added to the priority-claiming app
What is the DL for making a declaration of Priority? How?
- On filing or PD+16M
- PF3
NB. Can only use the PD+16M if a request for early publication has not been made
When can you request a declaration of Late priority? (aka. late filing)
After the 12M convention DL but within PD+14M
What conditions must be met for the Comptroller to admit a Declaration of Late priority? s5(2)
- Comptroller satisfied that missed DL was unintentional (provide evidence)
- Declaration of Priority must be made at same time as requesting ‘Late Priority’
- No request for early publication
- Form and Fee
NB. wrt to (2) If request relates to a PCT(GB), the DL = NPE + 1M
If the Convention DL falls on a Closed day (e.g., weekend), what happens to the 12M DL?
Rolls over to the next working day (i.e., 12M + 1day)
What is the DL for providing a certified copy of the of the priority application?
How do can you provide it to the IB?
PD+16M (but anytime before tech preps for publication)
1. As rO to send to IB
2. Provide IB with PDAS code
If the priority app was not in English or Welsh, what will the Comptroller request? Under what condition?
- If priority app are relevant to novelty and inventive step
- Comptroller requests a translation of the priority-forming application
- Alternatively, applicant can submit statement “App is a complete translation into EN of priority doc”
What is the effect of not providing:
1. The certified copy in time; or
2. A translation of the priority-forming application?
Comptroller will disregard the priority claim and app has later EFD.
When assessing the validity, what must you be on the lookout for?
1) Within 12M (+2M)
2) Same SM?
3) Same applicants?
If all yes, then is the priority-forming application the first app claiming that SM?
Think :
- US Cont. In-Part application
- Any subsequent application with at least one of the same applicants
If a PCT application claiming priority to another application was filed after the 12M convention DL but before within the 2M following, what are the conditions for Priority claim to be restored?
- DL was missed unintentionally (UK) or despite all due care (EP)
- Make a late declaration of priority within 1M of NPE(GB)
If you miss claiming priority on PCT filing, what is the DL for doing so? (r26bis.1 PCT)
Priority claim can be added the later of:
1. PD+16M
2. FD+4M
As long as PCT has not been published yet! (e.g., by request of early publication)
If so, just withdrawn request to publish early (if still time)
