Priority

Essentials:
Priority

UK approach Dutch approach

EU Unitary PCT and entry Patent Legal Scope of
Priority
Patent national phase procedure framework protection
What is a French approach German approach
patent
Patent
documentation
Justification History SPCs

Introduction

Due to the globalisation of markets and the increase in international

trade, by the end of the 19th century there was a growing need for
common international standards in applying for and protecting patents
and other intellectual property rights. In particular, inventors who wanted
to obtain patent protection for an invention in more than one country Novelty
An invention can be patented only if it is
faced the problem that a patent application they filed in one country new. An invention is not new and therefore
could be deemed to be novelty-destroying prior art in another country, if not patentable if it was known to the
public before the filing date, or before the
the application was filed subsequently in that other country. But national priority date if priority of an earlier patent
and translation requirements made it difficult for inventors to file patent is claimed.
applications for the same invention at the same time in more than one
country. Consequently, whenever an invention was put on a particular
market shortly after the first patent application was filed, the invention
was no longer patentable in some of the other intended markets.

In order to solve this problem and to safeguard inventors’ interests, the

Paris Convention for the Protection of Industrial Property, concluded in Paris Convention
The Paris Convention for the Protection of
1883, introduced the concept of priority rights for patent applicants on an Industrial Property introduced the priority
international level. right for patents on an international level
in 1883.

According to this priority right, anyone who files a patent application has
the right to file an identical application in another signatory country of
the Paris Convention within a certain time frame without being exposed
to the risk that their own first application may be assessed as novelty-
destroying in subsequent application procedures in other jurisdictions.

Consequently, the main effect of priority right is that, in terms of novelty,

the filing date of the first application is considered to be the effective date
for determining the state of the art of the subsequent applications within

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twelve months. The filing date of the first application is then defined as
the priority date for any subsequent application for the same invention.

However, inventors need to be aware that priority right is a right limited

by time. The time period for claiming priority for patent applications is
twelve months. This period gives applicants the chance to identify market
opportunities for their invention, continue development of the product
or process and/or decide in which countries patent protection appears
reasonable.

For inventors seeking patent protection for the same invention in

more than one country, the principle of priority is very useful, as they
do not have to file the application in all the countries concerned at the
same time. As the first application is considered to have priority over
subsequently filed applications and publications, the inventor will be
considered as being the first to file in other countries, even if other
applications are filed or relevant documents published in the meantime.

Definition

The priority date is the first date of filing of a patent application. It is

essential for determining whether any subsequent application for the
same invention can still be assessed as novel. It also makes it possible to
determine whether the subject-matter of a patent application is prior art
on a particular date.

The priority date is, however, not necessarily the same as the filing date.

The filing date of a patent application is the date the patent application
was filed with the patent office, i.e. the date on which that application
was legally accepted by that patent office. It is usually the date on which
the documents are filed with the patent office. It may also be later, if there
are formal errors in the application or certain documents are missing.

The filing date is usually the same as the priority date if the patent
application is an original, non-provisional patent application, not a
continuation application, and not previously filed in another country.

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Legal basis

There are various types of priority right, with different legal bases.

1. Paris Convention Article 4 Paris Convention

(A)
The Paris Convention is a multilateral arrangement between (currently) Any person who has duly filed an
175 contracting parties. One of its most important regulations is Article 4. application for a patent, [ … ], in one of the
countries of the Union, or his successor in
title, shall enjoy, for the purpose of filing
In essence, Article 4 of the Paris Convention states that if an intellectual in the other countries, a right of priority
during the periods hereinafter fixed.
property right – in this case a patent – has been filed in one of the
(B)
signatory countries, the applicant may claim priority for any subsequent Consequently, any subsequent filing in any
identical application within twelve months, starting from the date of of the other countries of the Union before
the expiration of the periods referred to
filing of the earlier application. above shall not be invalidated by reason
of any acts accomplished in the interval, in
particular, another filing, the publication or
2. European Patent Convention exploitation of the invention, the putting
on sale of copies of the design, or the use
The European Patent Convention (EPC) is an international treaty that sets of the mark, and such acts cannot give
out a priority right system for first filings in or for states which are party rise to any third–party right or any right of
personal possession.
to the Paris Convention or any member of the World Trade Organization
(C)
(WTO). Article 87(1) EPC reads as follows: The periods of priority referred to above
shall be twelve months for patents and
utility models [ … ],
"Any person who has duly filed, in or for
These periods shall start from the date of
(a) any State party to the Paris Convention for the Protection of Industrial filing of the first application; the day of
filing shall not be included in the period.
Property or [ … ].
(b) any Member of the World Trade Organization,

an application for a patent, a utility model or a utility certificate, or his

successor in title, shall enjoy, for the purpose of filing a European patent
application in respect of the same invention, a right of priority during a
period of twelve months from the date of filing of the first application."

According to Article 88(2) EPC, it is even possible to claim multiple Guidelines for Examination in the
European Patent Office
priorities of a patent application or a patent claim, meaning that www.epo.org/law-practice/legal-texts/
an applicant may claim more than one priority based on previous guidelines.html
applications in the same or different states and/or WTO members.

The effect of priority right according to the EPC is that the date of priority
counts as the date of filing of the European patent application for the
purposes of Article 54(2) and (3) and Article 60(2) (see Article 89 EPC).

The procedure for claiming priority for a European patent is laid down in
Article 88 EPC and the Implementing Regulations.

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3. Patent Cooperation Treaty Article 8 PCT
Claiming priority
The Patent Cooperation Treaty is an international patent law treaty. A PCT (1) The international application may
contain a declaration, as prescribed in the
application establishes a single filing date in all contracting states and Regulations, claiming the priority of one or
essentially leads to a standard national or regional patent application, more earlier applications filed in or for any
country party to the Paris Convention for
which may be granted or rejected according to the applicable law in the the Protection of Industrial Property.
relevant jurisdiction in which a patent is desired. As set out in Article 8(1)
PCT, any such application may contain a declaration claiming a priority
right based on an earlier patent application.

4. Domestic priority rights Section 40(1)

German Patent Act
Some jurisdictions provide for a domestic priority right that allows Within a period of 12 months from the
filing date of an earlier patent or utility
inventors to claim the priority of a first application when filing a model application filed with the Patent
subsequent application within the same jurisdiction. For example, Office, the applicant is entitled to a priority
right with respect to the application for
Section 40 of the German patent law allows for the opportunity to claim a the same invention unless a domestic or
domestic priority. foreign priority was already claimed for the
earlier application.

Claiming priority

In order to claim priority rights, applicants must fulfil certain conditions.

For a European patent, these conditions are laid down in Articles 87 and
88 EPC.

1. Timeline for claiming priority rights

Applications claiming priority of an earlier application must be filed

within 12 months of the date of filing of the earlier application.

2. Substantive requirements

(a) Earlier application

In order to claim priority, an earlier application for the same patent must
have been filed. An earlier application is any patent application which is
duly filed with a patent office and whose application date is earlier than
the application date of the subsequent application.

Applications for which a domestic or foreign priority has already been

claimed are excluded.

(b) Identity of the applicant

The right to priority can only be claimed by the applicant who filed the
priority application or their successor in title.

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(c) Identity of invention
In order for a priority right to be claimed, there must also be identity of
invention. “Identity of invention” or “same invention” is established if
the earlier application substantially refers to the same invention as the
subsequent invention. A literal identity of any subsequent application is
not required. However, any changes in the subsequent application must
still refer to the same invention as disclosed in the earlier application.

In other words, priority of an earlier application can only be claimed if the

person skilled in the art can derive the subject-matter of the claim directly
and unambiguously from the earlier application by using no more than
his common general knowledge. This means that all the elements of the
newly worded claim must have been disclosed, explicitly or implicitly, in
the earlier application, i.e. it must be what is called an enabling disclosure.

According to the Enlarged Board of Appeal of the EPO in G 2/98, priority Opinion of the Enlarged Board of Appeal of
the EPO dated 31 May 2001, G 2/98
is effective “only if the skilled person can derive the subject-matter of the www.epo.org/law-practice/case-law-
claim directly and unambiguously, using common general knowledge, appeals/pdf/g980002ep1.pdf
from the previous application as a whole”.

In contrast, identity of invention is not possible if the invention disclosed

in the subsequent application is characterised by additional features.

(d) Disclosure of characteristics

The right to priority is provided only for characteristics sufficiently
disclosed in the patent application for them to be appreciated by a person
skilled in the art.

The scope of the disclosure in the earlier application is determined from

the application documents, i.e. the description, claims and drawings.

3. Formal requirements

In order to claim priority, the following must be provided:

–– A declaration that priority is claimed.
–– Information about the file number of the earlier application.
–– A copy of the previous application.
–– If necessary: a translation of the earlier application.

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Summary

The major advantages and effects of priority right are:

–– The filing date of the first application counts as the date by which the
state of the art is assessed against the application.

–– Applicants have, during the priority period of twelve months, time

to evaluate the commercial potential of the invention, to continue
developing it and to decide in which countries subsequent patent
applications for the same invention should be filed.

–– Applicants can postpone spending time and money on foreign patent

application procedures until they have received a first report on the
patentability of the invention.

–– Applicants can make their invention public without generating novelty-

destroying prior art in respect of any subsequent patent application
within twelve months.
–– Applicants can maintain the novelty of their inventions for subsequent
patent applications filed elsewhere within twelve months, even if
someone else has applied to patent the same or a similar invention in
the meantime.

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