PCT International Search and Preliminary Examination Guidelines


Chapter 6 Priority

The Right to Priority

Articles 11, 14; Rule 20

6.01  An international application is accorded as its international filing date the date on which it satisfies the requirements of Article 11. This date remains unchanged except in the special circumstances of later-filed drawings as provided in Article 14(2) and/or later-filed parts of the description, claims and drawings that were missing at the time of original filing (see Rule 20.5(c)), or later-filed correct elements or parts to correct the ones that have been erroneously filed (see Rule 20.5bis(c)), subject to the possibility of incorporation by reference without loss of the original filing date as provided by Rule 20.6. The international filing date may be the only effective date of the international application. It will be of importance for fixing the expiration of certain time limits and for determining the state of the art relevant for the purposes of the international search and examination.

Article 2(xi)

6.02  However, in many cases, an international application will claim the right of priority of the date of filing of an earlier application. In this case, it is the priority date (that is, the filing date of the earlier application) which will be used to calculate certain time limits. Furthermore, it is the priority date which becomes the effective date for the purposes of the international examination, that is, the written opinion (of either the International Searching Authority or the International Preliminary Examining Authority) and the international preliminary examination report. Note that the relevant date for the purposes of the international search is always the international filing date. Paragraph 11.03 defines the “relevant date” for purposes of the international search while paragraphs 11.04 and 11.05 define the “relevant date” for purposes of the written opinion (whether prepared by the International Searching Authority or the International Preliminary Examining Authority) and the international preliminary examination report. See also paragraphs 17.29 and 18.16. Paragraph 15.01 defines “relevant prior art” for the purposes of the international search while paragraph 11.01 provides a general definition of prior art.

Article 8(1); Rules 2.4, 4.10, 26bis.2

6.03  For a valid claim to priority, several conditions must be satisfied. First, the earlier application whose priority is claimed must have been made by the applicant or his predecessor in title. Next, the earlier application must have been “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.” The words “in or for” any country or Member mean that the earlier application the priority of which is claimed may be an earlier national, regional or international application. Furthermore, the international application must in general have been filed within 12 months from the filing of the earlier application (the “priority period”). However, a priority claim will not be considered void only because the international filing date is later than the date on which the priority period expired, provided that it is within two months from that date (Rule 26bis.2), for example, in order to take into account the possibility of the applicant being granted restoration of rights in respect of the priority period either before the receiving Office in the international phase (Rule 26bis.3) or before the authorities of the designated states (Rule 49ter.2). The earlier application may be for a patent or for the registration of a utility model or for an inventor’s certificate. So long as the contents of the earlier application were sufficient to establish a filing date, it can be used to create a priority date, no matter what the final disposition of the application may later be; for example, it may subsequently be withdrawn or held withdrawn. Other conditions to be satisfied for a valid claim of priority are mentioned in paragraphs 6.04 and 6.11 to 6.17.

Article 8(2)(a)

6.04  Normally, the application the priority of whose filing date is claimed must be the first application that has been filed for the invention. However, a subsequent application for the same subject matter as the previous first application filed in or for the same State will be considered as the first application for priority purposes if, when this subsequent application was filed, the first application had been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and had not served as a basis for claiming priority. The examiner will not normally consider this question unless there is clear evidence of the existence of an earlier application as, for example, in the case of a United States continuation application. Where it is clear that an earlier application for the same subject matter exists, and where the priority right is important because of intervening prior art (see paragraph 6.06), the applicant should be invited to satisfy the examiner that there were no rights outstanding in the earlier application in respect of the subject matter of the application being examined.

Article 8(1)

6.05  An international application may claim rights of priority based on more than one earlier application (“multiple priorities”), even if they originate in different countries. An element of an international application will be accorded the priority date of the earliest priority application which discloses it. If, for instance, the international application describes and claims two embodiments (A and B) of an invention, A being disclosed in a French application and B in a German application, the priority dates of both the French and German applications may be claimed for the appropriate parts of the international application; embodiment A will have the French priority date and embodiment B the German priority date. If an international application is based on one earlier application disclosing a feature C and a second earlier application disclosing a feature D, neither disclosing the combination of C and D, a claim to that combination will be entitled only to the date of filing of the international application itself. In other words, it is not permitted to make a mosaic of the priority documents. An exception might arise where one priority document contains a reference to the other and explicitly states that features from the two documents may be combined in a particular manner.