Priority right

In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The period of priority, i.e., the period during which the priority right exists, is usually 6 months for industrial designs and trademarks and 12 months for patents and utility models. The period of priority is often referred to as the priority year for patents and utility models.

In patent law, when a priority is validly claimed, the date of filing of the first application, called the priority date, is considered to be the effective date of filing for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application. In other words, the prior art which is taken into account for examining the novelty and inventive step or non-obviousness of the invention claimed in the subsequent application would not be everything made available to the public before the filing date (of the subsequent application) but everything made available to the public before the priority date, i.e. the date of filing of the first application.

Rationale

The "basic purpose [of the right of priority] is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law."^[1]

Types

Convention priority right

The "Paris Convention priority right", also called "Convention priority right" or "Union priority right", is a "priority right" under a multilateral arrangement, defined by Article 4 of the Paris Convention for the Protection of Industrial Property of 1883. The Convention priority right is probably the most widely known priority right. It is defined by its Article 4 A.(1):

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.^[2]

Article 4 B. of the Paris Convention describes the effects of the priority right:

Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third–party right or any right of personal possession.^[2]

Article 2 paragraph 1 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) in conjunction with the Paris Convention provides a "derived" Convention priority right.^[3] That is, while WTO members need not ratify the Paris Convention, they should however comply with Articles 1 through 12, and Article 19, of the Paris Convention. (For a comparative list of the States party to the Paris Convention and the members of the WTO, see for instance States Party to PCT/Paris/WTO] on the WIPO web site^[4]).

Priority rights under other multilateral arrangements

Some priority rights are defined by a multilateral convention such as the European Patent Convention (EPC)^[5] or the Patent Cooperation Treaty (PCT).^[6] The Paris Convention does not cover priorities claimed in a European patent application or in an international application (or PCT application), as the EPC and the PCT have their own legal provisions regarding priority.

European Patent Convention

Article 87(1) EPC defines the priority right system under the EPC or more precisely recognise priority rights for first filings in or for States party to the Paris Convention or any Member of the World Trade Organization (WTO):^[7]

Any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial 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.

Article 89 EPC describes the effect of the priority right:

The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.

As explained by the Enlarged Board of Appeal of the European Patent Office (EPO) in its decision G 3/93 of August 16, 1994 (Reasons 4):

Articles 87 to 89 EPC provide a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application (cf. decision J 15/80, OJ EPO 1981, 213). The Paris Convention also contains rules of law concerning priority. The Paris Convention is not formally binding upon the EPO. However, since the EPC - according to its Preamble - constitutes a special agreement within the meaning of Article 19 of the Paris Convention, the EPC is clearly intended not to contravene the basic principles concerning priority laid down in the Paris Convention (cf. decision T 301/87, OJ EPO 1990, 335, reasons point 7.5).^[8]

Regarding the critical question "What is 'the same invention'?" in Article 87(1) EPC, opinion G 2/98 prescribes a photographic approach to the assessment of priority.^[9] According to Enlarged Board of Appeal opinion G 2/98, the requirement for claiming priority of "the same invention" means that priority of a previous application in respect of a claim in a European patent application is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.^[10]

Patent Cooperation Treaty

The Patent Cooperation Treaty, in its Article 8(1), provides the possibility of claiming a right of priority for the filing of an international application (PCT application):

The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.^[6]

Rule 4.10(a) PCT goes on to mention that:

Any declaration referred to in Article 8(1) ("priority claim") may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention.^[11]

However, Rule 4.10(a) as amended with effect from January 1, 2000 does not apply to all designated Offices.^[12] For instance, for the European Patent Office as designated Office, the old Rule 4.10(a) still applied until December 12, 2007, that is, rights of priority of first applications made in a WTO member not party to the Paris Convention were not recognised. Now and more specifically for European patent applications filed on or after December 13, 2007 (the entry into force of the new version of the European Patent Convention, the so-called EPC 2000), the rights of priority of first applications made in a WTO member are recognized under the European Patent Convention.^[13]^[14]

Internal priority rights

Some priority rights, called "internal priority rights", are defined by some national laws.^[15] Such internal priority right allows an applicant who filed a first application in a given country to claim the priority of the first application when filing a subsequent application in the same country. The Paris Convention does not cover internal priority rights. See, e.g., provisional application in the US.

Priority rights under bilateral agreements

Some priority rights also exist on the basis of bilateral agreements.^[16] A bilateral agreement between a first and a second country may allow an applicant who filed an application in the first country to claim the priority of the first application when filing a second application in the second country. These kinds of bilateral agreements usually involve at least one country not party to the Paris Convention.

Example

An example may help to understand the legal concept of priority right. The example presented here illustrates the case of the priority right in patent law, but the example could be extended to trademarks, taking into account the difference of priority period (12 months for patents, 6 months for trademarks).

Let us imagine the following scenario. Ms. A has invented an improved mousetrap and decides to apply for a patent on her mousetrap. She first files a German patent application on July 15, 2006. Starting from July 16, 2006,^[17] Ms. A has then one year to file patent applications in other countries to be able to benefit from the date of filing of the German patent application in these other countries. If Ms. A files on July 15, 2007 a patent application in the United Kingdom (UK) for her mousetrap, and if, upon filing the patent application in the United Kingdom, Ms. A claims the priority of the earliest German patent application filed one year before,^[18] the date for examining the novelty and inventive step requirements in the United Kingdom will be July 15, 2006, not July 15, 2007.

This means that any disclosure to the public of the improved mousetrap on or after July 15, 2006 (by Ms. A or anyone else) will not prejudice Ms. A's patent application in the United Kingdom. If Mr. B independently invents around January 2007 the same improved mousetrap and decides to directly publish in February 2007 a paper explaining how his new mousetrap works, the publication of the paper by Mr. B will not affect the novelty of Ms. A's patent application in the United Kingdom, even though the publication of Mr. B's paper takes place before the actual date of filing of Ms. A's UK patent application.

The priority system, including this one-year priority right, enables Ms. A to file a patent application as soon as possible in one country (in this case in Germany, and in the German language), and gives her one-year to do whatever is necessary to file patent applications in other countries (translating the text of the application, filling the application forms, sending the translated application and forms to the foreign patent offices, collecting the funds to pay the filing fees, and so on) without being affected by any intervening publication. The actual date of filing in the United Kingdom remains July 15, 2007, and this is the date from which the 20-year duration of any ensuing patent is calculated.^[19] The example also applies to many other countries, such as to all countries which are party to the Paris Convention.^[20]

Special considerations

Partial priority for patent claims

The extent to which a partial priority can be acknowledged for a single claim in a patent application or patent -i.e., only for a part of the claim, for which the subject-matter is disclosed in the priority document- is a delicate question.^[21] Decision G 1/15 of the Enlarged Board of Appeal of the EPO deals specifically with this question.

Extension of the priority period in case of official holidays and other "closed" days

The Paris Convention for the Protection of Industrial Property of 1883 provides for that, if the last day of the 12-month priority period "is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed", the priority period is extended "until the first following working day".^[22]

References

^ Decision T 15/01 of June 17, 2004 of the Board of Appeal of the European Patent Office. See also Decision T 577/11 of 14 April 2016, Reasons 6.5.3, 5th paragraph: "The creation of the right of priority was aimed at protecting the rights of the applicant of a first application for an invention in all countries of the Paris Union by securing the filing date as the effective date for the definition of the state of the art. This was to enable the applicant to decide, within a certain period, in which other countries protection should be sought in respect of the same invention and to prepare for such subsequent filings which, in the absence of a centralised filing system, were still required at that time. In the event of such subsequent filings, other applications or disclosures occurring in the priority period were to have no negative effect as regards the patentability of the invention (see Article 4B Paris Convention)."
^ ^a ^b Article 4 Paris Convention
^ Article 27 TRIPs Agreement
^ States Party to PCT/Paris/WTO on the WIPO web site (Adobe PDF)
^ Article 87(1) EPC
^ ^a ^b Article 8 PCT
^ Under the European Patent Convention (EPC), rights of priority may be obtained from the filing of patent applications in Members of the World Trade Organization which are not party to the Paris Convention since December 13, 2007, the date of entry into force of the EPC 2000, the revised version of the EPC.
^ Decision G3/93 of August 16, 1994 of the Enlarged Board of Appeal of the European Patent Office
^ Hans-Rainer Jaenichen, Olaf Malek, The Assessment of priority cannot demand more than science can deliver or: How to apply the photographic approach in consideration of the resolving of the pictures taken^{[permanent dead link]}, epi Information 3/2008, pp. 91-102.
^ European Patent Office, Opinion of the Enlarged Board of Appeal dated 31 May 2001, G 2/98, point 9: "It means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
^ Rule 4 PCT
^ Rule 4, note 1, Patent Cooperation Treaty
^ Article 87(1)(b) EPC
^ Special edition of the Official Journal of the EPO 4/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part I: The Articles, 2007 (PDF, 1.72 MB), page 88.
^ For instance, in Canada: Manual of Patent Office Practice (MOPOP), Chapter 7: Internal priority and convention priority.
^ For instance, bilateral agreements with Taiwan: Government Information Office, Republic of China (Taiwan), Taiwan's commitment to protect intellectual property rights. Cooperative Agreements Signed between Taiwan with Other Nations Archived 2008-07-05 at the Wayback Machine, Consulted on November 11, 2007.. Agreement No. 3 "Mutual Recognition of Invention Patent Priority Right with Germany", No. 5 "Mutual Recognition of Patent Priority Right with Switzerland", etc... are bilateral agreements on priority rights for patents. Other bilateral agreements relate to trademarks and industrial designs.
^ The day of filing is not included in the period - Article 4 C.(2) Paris Convention.
^ Under some jurisdictions, the priority claim need not be made upon filing. In the specific example used for instance, i.e. filing the patent application in the United Kingdom, Ms. A does not have to declare priority claim on filing. She has actually until 16 months from the claimed priority date to provide the number and certified copy of the earlier application using Patents Form 3 and paying £40, provided there was no early publication of new application (see Patent Rules 2007, Rule 6). In addition (still in the specific example of filing the patent application in the United Kingdom), she could file an application up to two months after expiry of priority period and still validly claim priority using Patents Form 3 and paying £190 (which includes a late fee of £150) and filing evidence to show that the failure to meet the original deadline was unintentional (see Patents Act 1977, section 5(2B) and the Patent Rules 2007, rule 7)).
^ "Section 25: Term of patent Sections (25.01 - 25.15)". Intellectual Property Office. March 2017. Retrieved 21 April 2017. The twenty-year term of the patent is measured from the date of filing.
^ Example: GB 2418275 filed on September 16, 2005 claims priority of a first filing in the US on September 17, 2004.
^ For a discussion of the question, see for example Decision T 0571/10 of 3 June 2014 of Board of Appeal 3.3.07 of the European Patent Office.
^ Article 4.C.(3) Paris Convention.