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 - if member of the Paris Convention or the WTO
What is a ‘Convention Country’?
All WTO states + more
An intervening act is an act carried out by a third party in the period between …
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?
Allows 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?
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 type of application can you claim priority from?
Patent application, utility model or utility certificate.
Who is entitled to claim priority from an earlier application?
The same applicant or successor in title.
Under Rule 6, if application filed within the 12-month period, when m ust you declare priority
At time of filing or within 16 months from the declared priority date.
What is required to claim priority under Rule 6:
Form ?
£?
other?
Form 3
£40
No publish request or withdrawn before preparations completed.
What (4) details are required under a Rule 6 request?
Country
Date of filing of the earlier application
Application numbers
Certified copies
Rule 7 permits a late filing request to be made within…
**2 months **after the normal 12 month priority period.
What are the requirements to claim priority under Rule 7? (Form, £, other)
Form 3
£40
£150 late fee
evidence that it was unintentional to file late
What is the exception to Rule 7?
Divisionals and Applications filed following Disputes.
How is the filing of a late filing request different for divisionals and applications following dispites under Rule 7?
Made in writing and no evidence required.
Repeat filing of subject matter will be disregarded as a basis for priority itself unless…
First filing lost all rights by withdrawal or refusal before publication
What is the deadline for making a late declaration of priority for PCT(GB) applications?
Within 1 month of National Phase entry.
Conditions for making a late filing request?
no request for early publication or request is in relation to a PCT(GB)
What is the declaration deadline for filing a late 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 an application filed 13 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.
