Priority

Question 1

What is the relevant priority date of particular subject-matter in an application?

Answer 1

By default, the filing date

Or the filing date of the earliest disclosure of that subject-matter in a priority document which was filed by the applicant or their predecessor in title

NB:

• In practice requirement of same applicant means you can add new applicants but not remove old ones
• Can only claim priority from a document which discloses the invention for the first time - divisionals/continuations can never be priority docs
• Get assignments prior to claiming priority!

Question 2

What is the period for filing an application claiming priority?

Answer 2

• Usually 12 months from the earliest priority document
• But, under s.5(2B) can request a late declaration up to two months after expiry of priority period

Question 3

What are the condition for a late filed application claiming priority?

Answer 3

• Request complies with rules (i.e. use form PF3 + FEE within 2 month period)
• Evidence is provided that failure to file in 12 month period was uninentional
• Declaration made on filing
• (no request for early publication)

Question 4

What are the conditions to re-file an identical priority document to reset the priority period?

Answer 4

First filing must have lost all rights by withdrawal/refusal before publication (including the right to act as a priority doc.) on or before filing the second application in the same country

Exhaustion - if an application claims priority from another, even if both are withdrawn prior to publication, the earlier document cannot be used as a priority document again

Question 5

What is the deadline to declare priority for an applicaiton filed in the normal priority period?

Answer 5

1. Declare on filing; or
2. Within 16 months from earliest priority date (FORM + FEE)
   
   • Provided no request for early publication
   • Declaration includes country, date of filing, application number and a certified copy

NB this period is not extendable

Question 6

What happens if no evidence is filed along with a late filed application claiming priority?

Answer 6

Comptroller will set a period in which to file evidence

Question 7

What are the rules for filing a late request for priority for divisionals/application filed following entitlement disputes?

Answer 7

• FORM + FEE
• Request on filing (within 3 months)
• BUT no need to submit evidence of unintentional

Question 8

What is the deadline to request late declaration of priority for a PCT(GB) application?

Answer 8

• In the International Phase - provide the receiving office with a declaration within 16 months from priority
• In the National Phase - late declaration with 1 month after enterting the national phase

Question 9

Where a single claim encompasses a number of embodiments with different priority dates, when will the claim lack novelty?

Answer 9

If any single embodiment lacks novelty the whole claim will lack novelty, even if the other embodiments have later priority dates which exclude the novelty destroying prior art.

Question 10

What documents will be considered as valid priority documents?

Answer 10

• WTO/WIPO/PCT member patent applications (including US provisionals)
• Utility models

Question 11

When must a certified copy of a priority document be filed?

Answer 11

R8 - Within the 16 month period unless a copy is already available to the Comptroller (e.g. through WIPO).

Question 12

When must a translation of a priority document be filed?

Answer 12

Not necessary to supply a translation with a claim to prority

UKIPO will request a translation within specified period (R9(4)(a)) if necessary. Then either file a translation or declare that the application is a translation.

Question 13

PCT Scenario 1:

Filed on time but priority not declared

Answer 13

• Timeline set as if no priority claimed
• Fix in international phase: declaration within later of 16 months from priority or 4 months from filing
• Fix in national phase: treated same as a late declaration of priority, which can be made within 1 month after national phase begins (not sure this is true?)
• No need to show unintentional (only applies to failure to file within 12 months)

Question 14

PCT Scenario:

Application late within 14 months but not claimed

Answer 14

• National phase entry as if no priority
• Late declaration can be made within 1 month of national phase start
• Must show failure to file within 12 months was unintentional

Question 15

PCT Scenario:

Application late within 14 months and priority is claimed

Answer 15

• If filed lated, PCT will trust priority date for setting national phase entry
• Need to show unintentional within 1 month of entry in GB national phase

Question 16

What happens if priority is lost after publication?

Answer 16

In international phase - will reset the subsequent timeline

In national phase - won’t affect subsequent timeline (but would before publication)

Question 17

What is the test for a valid priority claim?

Answer 17

Novelty-like

Priority document must disclose all the essential features and these must be ‘clearly and unambigously’ derivable

Question 18

When can an additional priority declaration be made in the PCT stage?

Answer 18

The earlier of:

• 16 months from priority (as it is)
• 16 months from the new priority date

up to 4 months after the international filing date

Question 19

When can a priority declaration be withdrawn?

Answer 19

PCT(GB) - before national phase begins

GB direct - before preperations for publication are complete

Question 20

What should you do if a priority application is refused?

Answer 20

Advise client to specifically reserve the right to claim priority

Question 21

Scenario:

Forgot to send a certified copy to the UKIPO within 16 months

Answer 21

UKIPO will send a loss of priority date communication

Request an extension under R108(2)

If deadline for requesting an extension as of right is expired (two months), have to request a discretionary extension under R108(3) and supply evidence to show non-compliance was unintentional

Question 22

Scenario:

Earlier application withdrawn to restore priority, but not actually withdrawn by the patent office

Answer 22

Will have to provide evidence (e.g. postage delivery confirmation, fax receipt).

If evidence can be provided, then request to withdraw rights is valid.

If evidence cannot be provided, then document will be relevant for novelty and priority.