Priority

Question 1

What is the period of priority for a patent application under the Paris Convention and how does the Patent Law Treaty affect that period?

Answer 1

• The period of priority under the Paris Convention is 12 months;
• The PLT requires the Member States to allow at least an extra two months if either the failure to file during the Paris Period was unintentional or due care.
• EPO (reinstatement of rights) applies due care standard
• IPO (late priority claim) applies the unintentional test;
• More than 14 months after the priority date: not possible to claim priority at UKIPO or EPO. Outside the Paris Convention and the PLT extension.

Question 2

What do you understand by the term “priority date of a patent”?

Answer 2

• The priority date of a patent is the date of filing of the patent, or the date of filing of an earlier application if priority is claimed.
• The priority date is the date at which novelty and obviousness (and sufficiency) are judged.
• The priority date is the date from which time limits are calculated under the UK Patents Act, for example, the date of publication.

Question 3

What is needed to establish a priority claim?

Answer 3

Under Section 5(2), a priority claim requires:

• A request is made at the time of filing (or within 16 months of the priority date)
• Specification of one or more relevant earlier applications made by the applicant
• The application in suit is filed during the 12 month priority period
• (Under Art 6 PLT, contracting states can also require that a copy of the earlier application, and a translation where the earlier application is not in a language accepted by the Office, is filed within 16 months of the priority date)

Question 4

A patent application was filed in New Zealand on Friday 3^rd May 2013, can priority be claimed from the New Zealand patent application in an application filed at the UK IPO on

1. Wednesday 2 April 2014
2. Monday 5 May 2014
3. Wednesday 7 May 2014
4. Tuesday 4 November 2014

Answer 4

A patent application was filed in New Zealand on Friday 3^rd May 2013, can priority be claimed from the New Zealand patent application in an application filed at the UK IPO on

1. Wednesday 2 April 2014; – Yes
2. Monday 5 May 2014; Yes
3. Wednesday 7 May 2014; Yes <plt></plt>
4. Tuesday 4 November 2014. No

Question 5

What is needed to “renew” a priority date?

Answer 5

• After filing an application, the applicant may decide that he needs more time to perfect the idea or raise enough capital.
• He decides to withdraw the current application with no rights outstanding (e.g. no claiming priority from that patent), without prejudice to the right to come back later.
• The inventor can inform the patent office who acts accordingly before publication, and the patent ceases to exist, it is never published.
• Now the applicant can come back anytime, to start all over again. He can claim a new priority date – the date of filing of the new application.
• He has the right under the Paris Convention to establish his new priority date, provided he acts within the 12 months period.