Priority and Intervening Acts Flashcards
Sections 5 and 6 of the UK Patents Act
How long does an applicant have to claim priority from an earlier application?
12 months from the filing date of the earlier application.
What happens if multiple priority claims are made for different aspects of an invention?
Each aspect of the invention is given the priority date of the corresponding earlier application.
Can priority be claimed from an application filed in another country?
Yes, provided the country is a member of the Paris Convention or the WTO
What is a ‘Convention Country’?
All WTO states + more
What is an intervening act in the context of UK patent law?
An act carried out by a third party in the period between the filing of a priority application and the later UK application.
How does Section 6 protect third parties who begin using an invention before the later application is filed?
Provides a defence allowing them to continue using the invention if they had begun use in good faith.
What are the key conditions for a third party to benefit from protection under Section 6?
The third party must have made serious and effective preparations or begun use before the later filing.
How long can a late declaration request under section 5(2B) extend the filing period of a priority application?
2 months after end of priority year.
From which documents can you claim priority from for a priority claiming patent application?
Patent application, utility model or utility certificate.
Who can claim priority from an earlier application?
The same applicant or successor in title.
What is Rule 6?
If application filed within the 12-month period you may declare priority at the time of filing or within 16 months from the declared priority date.
What is required to claim priority under Rule 6?
Form 3
£40
No publish request or withdrawn before preparations completed.
What details are required under a Rule 6 request?
Country
Date of filing of the earlier application
Application numbers
Certified copies
What is Rule 7
Late filing request may be made within 2 months after the normal 12 month priority period.
What are the requirements to claim priority under Rule 7?
Form 3
£40
£150 late fee
evidence that it was unintentional to file late
What is the exception to Rule 7?
Divisionals and Apps filed following Disputes.
How do you file a late filing request under Rule 7 for divisionals and applications following dispites?
Made in writing and no evidence required.
What are the conditions for making a late filing request?
No early publication request
OR PCT(GB)
What is the deadline for making a late declaration of priority for PCT(GB) applications?
Within 1 month of National Phase entry.
What is the declaration deadline for filing a priority claiming application under Rule 7?
Request on filing.
I want to file an application claiming priority from a application filed 6 months ago. What do I do?
File Application
Declare priority in the next 10 months
File PF3
Pay £40
I want to file an application claiming priority from a application filed 11 months ago. What do I do?
File Application and Declare Priority
File PF3
Pay £40
Pay £150
File evidence to prove unintentional
as long as no request for early publication
When can a second application be treated as a first application for the purposes of a priority document?
If the previous application was withdrawn with all rights prior to publication and was never used as a basis for priority itself.
What is the deadline for filing certified copies of the priority documents?
Within the 16 month period.
When do you not have to file certified copies of the priority documents?
A PCT(GB) application when the priority documents were previously submitted to WIPO.
What is the EPC equivalent law?
EPC Article 87 (1) and (4)
What is the equivalent international law?
Paris Convention Article 4 and PCT Article 8
What are the requirements for a priority document to support the subject matter?
Priority doc must provide support for the invention and must be clearly and unambiguously derivable from it.
Can you still claim priority from a document that is ‘lost’ before filing a subsequent application claiming priority from it?
Yes - explicitly reserve the right to claim priority from it
when notifying comptroller of withdrawal/ in response to refusal notif.
What are the disadvantages of filing late declarations of priority?
Costs more
Less time to correct errors in priority claim
Prevents option to file missing matter without re-dating
When is the deadline for filing a priority claiming Design application?
6 months
When is the deadline for filing a priority claiming Trade Mark application?
6 months
How are priority dates calculated?
end of the day containing the anniversary of the filing date of the earlier application
What is the requirement for the subject matter of a priority application and an priority claiming application?
Subject-matter of the claim must be directly and unambiguously derivable by the skilled person from the content of the earlier application as a whole.
What is the test to decide if the subject matter is the same?
Same as test for assessment of Added Subject Matter.
UKIPO and EPO
Who must be named in the subsequent application?
All applicants (or successors) of the priority application.
Can you claim priority from an application that has been refused or abandoned?
Yes
When might a right still subsist in an abandoned/refused application?
Right to request reinstatement under Section 20A the UK Patents Act 1977, or to appeal the refusal.
When might a right still subsist in a withdrawn application?
Right under Section 14(10) and Section 117 of the UK Patents Act 1977 to request correction of the withdrawal if it was made in error
How are late filed applications dealt with differently in PCT?
No test of whether it was unintentional
How are late filed applications dealt with differently in EPO?
Stricter requirement of “all due care” - there is a higher bar to prove unintentional
What is the deadline for filing a late filed priority claiming application in the PCT and EPO?
Same as UK - 12 + 2 months
