Priority

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Chapter 1. Applicable text

Although close, the rules applicable to the priority for standard European applications are those of the EPC (A87 CBE) and not those of CUP (A4 CUP) (J15 / 80).

For Euro-PCT applications, the PCT should be applied (A150 (2) EPC) which explicitly refers to CUP (A8.2.a PCT) or more precisely to its latest version (ie Stockholm Act).

Chapter 2. Claims and priority correction

To learn how to claim and correct a priority, please look at: filing requirements.

Chapter 3. Substantive conditions to be respected

Section 3.1. People who can claim a priority

3.1.1. Every person

Any person may, in principle, claim a priority, whether or not that person is domiciled in a Member State.

3.1.2. Limitation

Nevertheless, this does not mean that there are no conditions for claiming priority.

The only people who can claim priority are (A87 (1) EPC):

• the applicant of the earlier application;
• his having cause.
  • the transfer must have occurred before the filing date of the application claiming priority;
  • the transfer must be valid according to the applicable legislation (eg in writing in France)
  • the transfer must be proved in writing before the EPO and this proof must be signed by both parties (T62 / 05). This proof may be produced later (Directives A-III 6.1).

In case of plurality of applicants when filing the application higher (Directives A-III 6.1):

• it is necessary that all the applicants or the successors of the priority application are among this plurality.
• a transfer to new applicants is not necessary as this is apparent from the joint filing of the new application.

3.1.3. Special case of a priority assignment

1) Principle

It may happen that a person transfers the initial application as well as the right of priority (eg filing of a provisional US application by the inventors).

2) Date and proof of the assignment

The new owner of the application must be able to prove that the assignment was carried out, this before the date of filing of the subsequent application (T1201 / 14 and A87 (1) EPC) (and claiming the priority of the original application).

It should also be noted that a contract subsequent to the filing of the second application but providing for retroactive effect is not considered to be in conformity with the requirements of theA87 (1) EPC (T1201 / 14).

3) Law applicable to the assignment

To assess the validity of the assignment, it is necessary to refer to the national law applicable to the assignment (and not the law of the country of filing of the original application) (T0517 / 14): but the case law of the EPO has not established the rule to determine this applicable law (good luck, huh?).

In particular, there is no reason that theA72 EPC (which prescribes a written assignment for a patent application) has no reason to apply to an assignment of the right of priority (T0517 / 14): the assignment can be quite oral if the national law allows it.

Thus, the case must be analyzed to determine the applicable law. For example, this can be:

• the law of the employment contract for an assignment between an employee and an employer;
• the law chosen by the parties when signing the assignment contract.

4) Even more particular case: a partial transfer of the right of priority

It seems entirely possible to assign only part of the right of priority (T969 / 14).

Thus, if an application contains two inventions (ie A and B), it is possible to yield A while retaining the benefit of B for oneself.

If unfortunately, the assignee files a patent application covering A and a bit of B, he will have the priority date for A but only the filing date for B (T969 / 14).

Section 3.2. Requests to claim a priority

3.2.1. Nature of requests

TheA87 (1) EPC specifies that the request may be:

• a patent application,
• a utility model application or
• an application for a utility certificate.

Industrial design applications (Geschmacksmuster) are excluded from this right (G3 / 93, J15 / 80, Directives A-III 6.1).

3.2.2. Origins of requests

The priority request must have been filed:

• in a state party to CUP (A87 (1) (a) EPC);
• in a member of the WTO (A87 (1) (a) EPCsince 13 December 2007, note that a WTO member is not necessarily a State);
• before the EPO ("in or for", A87 (1) EPC) and A87 (2) EPCbecause the EPC is a bilateral agreement, Directives A-III 6.2).

Although it is possible to foresee certain agreements with countries that do not respect these rules to extend this right (A87 (5) EPC), no communication has been made for the moment (Directives A-III 6.2).

Here is a table of the member countries with their date of membership:

Section 3.3. Same invention

A subsequent application contains the same invention as the earlier application DA if (F-VI Guidelines 2.2 and G2 / 98) the person skilled in the art can, using his general knowledge, deduce directly and without ambiguity from the contents of DA the object of DU.

The drawings of the DA application can be used (A88 (4) EPC and T169 / 83).

The elements mentioned in the reference to the state of the art can not be taken into account (F-VI Guidelines 2.2).

Finally, it is necessary that the content of DA is sufficiently described and allows the realization of the invention (T843 / 03).

If the claim contains an admissible disclaimer, this does not affect the validity of the priority (F-VI Guidelines 2.2).

Section 3.4. 12 months from the first request

3.4.1. Generality

It is only possible to claim the priority of an application during a period of 12 months from the first application (A87 (1) EPC).

If this deadline is not respected, it is possible to request a restitutio in integrum (A122 EPC), but only within a 2 months from the expiry of the first period (R136 (1) EPC, Directives A-III 6.6).

3.4.2. Real first request

A first request is a request that has been (F-VI guidelines 1.4):

• for the first time,
• filed in a CUP party state (or, without doubt, without certainty, a member of the WTO),
• and referring to the same invention as a subsequent application.

The principle is as follows:

Only the EP1 request can claim the priority of D1, and EP1 can not claim other priorities.

3.4.3. First partial application

decision G1 / 15 (which dealt with the case of the poisoned divisionaries) opens the way to new difficulties that we will try to understand here.

Imagine the following situation (T282 / 12) :

• a US1 claim has a range of 5-33% and a US2 claim has a range of 3-33%.
• an EP application is filed claiming the US2 application.
• an inferior prior art (between the priority US2 and the depot EP) discloses the value of 17%.

Is the prior art opposable?

In the decision T282 / 12, the Board of Appeal considers that the logic of G1 / 15 For reasons of coherence, the questions of priority must be applied: priority request US2 is the first request only for the part of the invention which is not the same as that of the earlier application US1.

The Board therefore finds that for the 5-33% range, US2 is not the first application, and the patent does not have priority, while for the 3- <5% range, US2 is the first application and the patent benefits from the priority.

3.4.4. Fiction of first demand

1) Principle

By fiction, it is possible to consider that a subsequent request as "first request" (F-VI 1.4.1 Directives).

To do this, it is necessary to respect the conditions of theA87 (4) EPC :

• the subsequent application must:
  • have the same object that the previous application (true first request normally);
  • have been filed in or for the same state the previous application (or, without doubt, without certainty, a member of the WTO),
• the earlier application must, on the filing date of the subsequent application,
  • have been withdrawn, abandoned or refused,
  • without being submitted topublic inspection
  • without leaving subsist rights,
  • that she not yet served basic for the claim the right of priority.

The earlier application can no longer be used as a basis for claiming the right of priority.

In this example, at the D2 filing date, there is no entitlement for D1 and D1 has not been used as a basis for another priority claim.

2) Not withdrawn, abandoned or refused

The earlier application may, on the date of filing of the subsequent application, have not been withdrawn, abandoned or refused (F-VI 1.4.1 Directives).

In this case, the priority claim for the subsequent application is not valid.

3) To have been submitted to thepublic inspection

This public inspection may be, in particular:

• publication under theA93 (1) EPC ;
• access to the file under theA128 (1) EPC because the applicant has authorized a third party to access it;
• access to the file under theA128 (2) EPC if the applicant has availed himself of his European patent application against a third party.

4) To leave rights

It is not very clear what rights are covered by this expression.

One can think of the rights that allow another application to benefit from the filing date of a subsequent application (out of priority) (F-VI 1.4.1 Directives):

• US "continuation" or "continuation-in-part";
• divisionaries;
• etc.

In case of doubt, and if the priority claim is important, the EPO may invite the applicant to prove that the previous application did not leave the right to remain (F-VI 1.4.1 Directives).

In the case presented, the D1 request is a first request for A, B and C, while D2 is a first request for D.

Note that EP1 will be a A54 (2) EPC for EP2 because of the publication (for A and B).

In the case of continuation-in-part, the elements common to the earlier application benefit from its filing date.

5) Previous application excluding UPC / WTO

If the previous application is filed outside the UPC / WTO, the earlier application will not be a first application (because it will not have created a right of priority, the contrary would be contrary to the spirit of the CUP) and will therefore not interfere. not a priority claim of a subsequent application in a CUP / WTO country.

6) Prior Non-CUP Application but in a WTO Jurisdiction

We can ask what happens if:

• the previous application is filed outside the CUP but in a WTO territory
• the earlier application is withdrawn without having left any rights
• a subsequent application is filed in the same territory.

Intuitively, we would say that the subsequent request can be considered as a first request in the light ofA87 (4) EPC.

Formally, this is not certain because the letter of the article says "filed in or for the same State"(State referring to CUP States, WTO members are not necessarily states, like Taiwan).

Personally, I do not think that this poses a problem (ie the subsequent request can be considered as a first request) because the fact that theA87 (4) EPC mentions only States (and not a member of the World Trade Organization such as theA87 (1) EPC appears to be an oversight of the legislator when amending the article: moreover, the article A87 (5) EPC which refers to theA87 (4) EPC mentions the members of the WTO.

7) Not having served as a basis for a priority claim

The mere fact that an application has claimed the priority of the earlier application (even if no publication takes place) renders final the fact that the earlier application is a first application.

8) Same applicant

If the applicant is not the same in the application (A87 (4) EPC), things can be quite surprising.

This situation is possible if there has been no assignment of the priority right from Z to W (T788 / 05).

Section 3.5. Exhaustion of the right of priority

Despite case law (T998 / 99) which prohibited the claiming of several deposit priorities having the same object in the same country and filed within a 12 months, it seems today that this is possible (T15 / 01 and T5 / 05).

Section 3.6. Claiming multiple priorities

It is quite possible to claim priority requests for different objects. Each object will then have a different date (A88 (2) EPC).

Chapter 4. Formal requirements

See the article on filing requirements.

Chapter 5. Translation of the priority document

Section 5.1. Principle

When filing and claiming a new priority, it is not necessary to translate the priority request.

Nevertheless, during the examination or during the opposition (exceptional case "Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended ", OG 2013, 150), it may happen that such a translation is requested: if the validity of the priority claim is relevant to establish whether the invention is patentable (ie if a relevant interleaved document is found by the Examiner), then a translation will be to be provided in one of the official languages after notification by the EPO and in a deadline (R53 (3) EPC).

This time limit is ("Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended ", OG 2013, 150):

• in case of European demand:
  • aligned with the time limit for the provision of the request for examination (R70 (1) EPC) or the time to confirm the examination (R70 (2) EPC) depending on the particular case, if the validity of the priority claim becomes significant at the moment the European search report is completed.
  • by the Examining Division, if the validity of the priority claim becomes significant during the examination procedure.
• in case of euroPCT request:
  • granted by the Examining Division (if the EPO was ISA or SISA)
• in case of European patent:
  • granted by the Opposition Division, if the validity of the priority claim becomes significant during the opposition proceedings.

TheA121 EPC is applicable to this deadline for the applicant while theA122 EPC is applicable for the holder.

Section 5.2. Full translation declaration

It is also possible to provide a declaration that the European application is a complete translation of the priority document (R53 (3) EPCsecond sentence).

This declaration may be made in the request for grant form (Directives A-III 6.8.6).

Section 5.3. Sanction

If no translation is produced within the deadlines, the intermediate documents will be considered as opposable (ie loss of the right of priority, A90 (5) EPC and R53 (3) EPC, last phrase).

Chapter 6. Miscellaneous

Section 6.1. Date of a claim

6.1.1. Principle

The date of each claim is analyzed independently of each other.

If an EP application filed at t1 claims an object A and the priority filed at t0 contains object A, then claim A has an effective date t0 (A89 CBE).

6.1.2. A and B

If an EP application filed at t2 claims an object "A and B" and the claim claims two priorities (A to t0 and B to t1), then claim "A and B" has an effective date t2 (filing date of the EP application).

This principle will be an exception if the priority filed at t1 explicitly mentions the priority deposited at t0 by indicating that the characteristics of the two documents can be combined in a particular way (F-VI 1.5 Guidelines).

6.1.3. A or B

The use of the word "or" is in fact a sign that the claim must be analyzed as two claims.

If an EP application filed at t2 claims an object "A or B" and that claim claims two priorities (A to t0 and B to t1), then claim "A or B" has two effective dates:

• t1 for B;
• t0 for A.

6.1.4. A and / or B

A claim "A and / or B" contains 3 objects "A", "B" and "A and B".

Section 6.2. Designation of the status of the priority request

It is quite possible to designate in the European patent application the State in which the priority application was filed (ie internal priority).

This is not foreseen by CUP, but it is in the EPC (A87 (1) EPC).

This is also possible in the PCT depending on the national provisions applicable for that State (A8.2.b PCT).

Section 6.3. Withdrawal of a priority after publication

The fact of withdrawing a priority after the publication of an application does not modify its opposability or not to another request as state of the art A54 (3) EPC (G-IV Guidelines 5.1).

It can thus happen things quite "surprising" as shown in the following diagram:

Thus, neither of the two EP1 and EP2 applications is new: they mutilate each other under theA54 (3) EPC.

Section 6.4. Claim of an invalid priority

Claiming a priority does not protect against the opposability of this priority demand.

In the following situation, the priority request EP1 is opposable under theA54 (3) EPC against object A claimed by EP2 because the priority is not valid.

The possible options to avoid such a problem are:

• insert a disclaimer in the EP2 claim (G1 / 03);
• withdraw the EP1 application before it is published (G-IV Guidelines 5.1.1).

Section 6.5. Partial priority

It is quite possible for a claim to have several different priority dates for different objects (T571 / 10).

This happens most frequently when a claim proposes an alternative, one branch of the alternative being supported by the priority while the other is not (or is supported by another priority).

Nevertheless, it is not necessary that the alternatives be stated as such in the application, or that the term "or" is actually used (T571 / 10): it is sufficient to be able to identify conceptuallyby comparing the object claimed with the disclosure of the priority document, a limited number of clearly defined alternative objects.

The Grand Chamber explains in point 6.4 of the decision G1 / 15 how to establish if a partial priority is valid for a generic claim of type "OR":

1. determine the object disclosed in the priority application and which is relevant to the prior art disclosed during the priority period,
2. consider whether this object is encompassed by the claim of the claim claiming priority.

If so, the claim is in fact conceptually divided into two parts, the first one corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the "OR" claim. , which does not benefit from the priority but in itself gives rise to a right of priority according to theA88 (3) EPC.

This approach was followed in the decision T260 / 14 or T1519 / 15.