PA 5 – Priority Date; PR 3, 6-9 Flashcards
What does S5 concern
Priority
What is the default priority date for an application
S5(1)
The filing date
How can the priority date be other than the default
S5(2)
you can declare one or more earlier relevant application as a PRIORITY DOUCMENT so
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)
Who can claim priority from an application
S5(2)
the priority application must be in the name of the applicant or their predecessor in title
if more than one applicant, this means ALL applicants in case of joint applicants
What is the normal filing period for claiming priority
S5(2A)
12 MONTHS from the earliest claimed priority
Can the filing period for claiming priority be extended
S5(2A)(2B)
the applicant can request a late declaration up to TWO MONTHS AFTER the end of the priority year
Under what circumstances can a late declaration to priority be claimed
S5(2C)
ONLY IF
a) the request complies with the rules and
b) the Comptroller agrees that failure to file the application claiming priority within the normal time was UNINTENTIONAL
When will a SECOND filing not be DISREGARDED as a basis for priority
S5(3)
Only if
the first filing lost ALL rights by withdrawal or refusal before publication, including the right to act as priority for ANY application anywhere (has no rights outstanding)
ON OR BEFORE the day the second application was filed IN THE SAME COUNTRY as the first application
What type of document can be used to claim priority
S5(5)
Related matter can be from a suitable application from the UK or any convention country
How should priority be claimed when filed within the normal period
R6
1) either at the time of filing
2) or within 16 MONTHS FROM THE DECLARED PRIORTY DATE (FORM and FEE)
3) provided if declared late there is no effective request for early publication
What should a declaration for priority include
R6
(4) the country, and date of filing of the earlier application
R8 (1) the application number of the earlier application and a certified copy
Can you add new priorities with divisional applications
R6(5)
No
How should LATE priority declarations be made (i.e. post 12M on filing)
R7
(2)a) On FORM 3 with FEE
b) supported by proof that it was UNINTENTIONAL that the 12M date was missed
(9) AT THE SAME TIME AS FILING (i.e. no 16M option)
What happens if no evidence of unintentionality was provided with the late filing of an application claiming priority
R7(3)
The Comptroller will specify a period to provide it
When is no proof on unintentionality required for filing a late priority claim
R7(4)
For a divisional or application filed following any type of entitlement dispute
In what circumstances can a late claim to priority be filed after the prescribed period
R7(6)
For a divisional or application filed following any type of entitlement dispute, where the declaration must be made on filing.
For a PCT (GB) application entering the national phase, what is the time limit for making a late declaration to priority
R7(7)(8)
you have ONE MONTH after national phase begins to make the claim
What is classified as a valid priority document
a WTO/WIPO/PCT member PATENT APPLICATION (incl. US Provisionals) or UTILITY MODEL
What must the document being used as a priority application
it must be the FIRST FILED application to that subject matter
When is a certified copy of a priority document not required
R9 if the Comptroller already has a copy avaliable
When will a translation of a priority document be required
R9(1)(c)
If the matters disclosed are relevant to the determination of whether the contents are new or contain an inventive step / or if the exact nature of the priority document is in doubt
How can you provide a translation of a priority document
R9(4)
a)within a time period specified by the comptroller
OR
b) with a declaration that the application is a complete english translation of the priority application
What is the test to see if something was disclosed in a priority document
Matter should be clear and unambiguously derivable from the priority document
When can a claim to priority be withdrawn
For a PCT(GB) before the national phase begins
or for any other GB case, before preparations for publication are complete
