PA 5 – Priority Date; PR 3, 6-9

Question 1

What does S5 concern

Answer 1

Priority

Question 2

What is the default priority date for an application

Answer 2

S5(1)
The filing date

Question 3

How can the priority date be other than the default

Answer 3

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)

Question 4

Who can claim priority from an application

Answer 4

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

Question 5

What is the normal filing period for claiming priority

Answer 5

S5(2A)
12 MONTHS from the earliest claimed priority

Question 6

Can the filing period for claiming priority be extended

Answer 6

S5(2A)(2B)
the applicant can request a late declaration up to TWO MONTHS AFTER the end of the priority year

Question 7

Under what circumstances can a late declaration to priority be claimed

Answer 7

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

Question 8

When will a SECOND filing not be DISREGARDED as a basis for priority

Answer 8

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

Question 9

What type of document can be used to claim priority

Answer 9

S5(5)
Related matter can be from a suitable application from the UK or any convention country

Question 10

How should priority be claimed when filed within the normal period

Answer 10

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

Question 11

What should a declaration for priority include

Answer 11

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

Question 12

Can you add new priorities with divisional applications

Answer 12

R6(5)
No

Question 13

How should LATE priority declarations be made (i.e. post 12M on filing)

Answer 13

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)

Question 14

What happens if no evidence of unintentionality was provided with the late filing of an application claiming priority

Answer 14

R7(3)
The Comptroller will specify a period to provide it

Question 15

When is no proof on unintentionality required for filing a late priority claim

Answer 15

R7(4)
For a divisional or application filed following any type of entitlement dispute

Question 16

In what circumstances can a late claim to priority be filed after the prescribed period

Answer 16

R7(6)
For a divisional or application filed following any type of entitlement dispute, where the declaration must be made on filing.

Question 17

For a PCT (GB) application entering the national phase, what is the time limit for making a late declaration to priority

Answer 17

R7(7)(8)
you have ONE MONTH after national phase begins to make the claim

Question 18

What is classified as a valid priority document

Answer 18

a WTO/WIPO/PCT member PATENT APPLICATION (incl. US Provisionals) or UTILITY MODEL

Question 19

What must the document being used as a priority application

Answer 19

it must be the FIRST FILED application to that subject matter

Question 20

When is a certified copy of a priority document not required

Answer 20

R9 if the Comptroller already has a copy avaliable

Question 21

When will a translation of a priority document be required

Answer 21

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

Question 22

How can you provide a translation of a priority document

Answer 22

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

Question 23

What is the test to see if something was disclosed in a priority document

Answer 23

Matter should be clear and unambiguously derivable from the priority document

Question 24

When can a claim to priority be withdrawn

Answer 24

For a PCT(GB) before the national phase begins
or for any other GB case, before preparations for publication are complete