6) Priority

Question 1

Priority: Rule 6
(16 month window)

Answer 1

The declaration of s5(2) must be made at filing or, if there has been no effective request for early publication, within 16 months beginning immediately after the earliest priority date by using the form and paying the fee. Note that this only applies if the application has been filed within the 12 months.

Question 2

Priority: Rule 7
(Late requests)

Answer 2

The late request can be made during the two month extension (form and fee), and the declaration must be made at the same time as the request. It must be accompanied by evidence that the delay was unintentional. If no evidence is provided, the Comptroller will set a deadline for providing it. There must be no effective request for earlier publication in order to make a late request.

For divisional applications and applications filed following disputes (henceforth collectively referred to as “new applications”), the rules are more relaxed. The request can be in writing without using the form. Moreover, if the new application is filed after the two month extension period then a late request is still allowed if it is made on filing.

Question 2

Priority: Rules 8 & 9
(Copies of documents)

Answer 2

The declaration must specify the date of filing of each priority document and the country it was filed in. [R6]

Within 16 months of the earliest priority date, the applicant must give the Comptroller the application number (unless the application in suite is a PCT(GB) and the application number was already given during the international phase in compliance with the PCT) and a vertified/certified copy of each priority document (unless already provided under the PCT or unless the document is already available to the Comptroller).

If a priority document is provided in a language other than English or Welsh, the Comptroller shall specify a period for providing an English translation, said period ending before the grant of the patent.

Question 2

Section 5
Priority

Answer 2

(1) By default, the priority date of an invention is the filing date of the patent application for the invention (the application in suite).

(2) If the applicant or a predecessor in title makes a declaration specifying one or more relevant earlier applications filed by the applicant or a predecessor in title, and if the application in suite has a filing date within the period specified in subsection (2A) below, then
(a) if the invention is supported by matter disclosed in the relevant earlier applications, the priority date of the invention shall be the filing date of the earliest relevant application in which that matter was disclosed;
(b) the priority date of any matter contained in the application in suite is the date of the earliest relevant application in which that matter is disclosed

(2A) The allowed period is 12 months beginning immediately after the earliest priority date, but the Comptroller can give permission for this to be extended [by a further two months – form and fee (R7)].

(2B) The applicant may request permission from the Comptroller for a late priority declaration.

(2C) A request under subsection (2B) will be allowed only if it complies with the rules and the Comptroller is satisfied that the failure to file the application in suit within the 12 months was unintentional.

(3) A second application with the same subject matter as a previous first application and filed in the same country as the first, cannot be used as the basis of a priority claim unless, at the time of filing the second application, the first application had been withdrawn, abandoned or refused, without being publicly disclosed and without leaving any rights outstanding, and having not been used itself for a priority claim.

(4) Determination of priority date is the same for granted patents as for patent applications.

(5) Earlier relevant applications can be from any convention country.

Note from section 5.28.2 of the Manual of Patent Practice:

An applicant who files a second application and wants to use it for priority purposes must therefore ensure that the first application has not been published or used to form the basis of a priority claim. They must also ensure that, at the time of filing the second application, the first application has been withdrawn, abandoned or refused “without leaving any rights outstanding”. On an application that has been refused by a decision of the comptroller, an outstanding right may be the right to appeal that decision, or the right to request reinstatement of the application under section 20A (see 20A.02 to 20A.07). On an abandoned application (i.e. one that is treated as refused or withdrawn), the right to request reinstatement under section 20A may again be an outstanding right. On a withdrawn application, an outstanding right may be the right to request correction of an erroneous withdrawal under section 14(10) and section 117 (see 14.209 and 117.22.1).