Priority

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Chapter 1. Correction or Addition of Priority

Section 1.1. Principle

It is possible to correct an existing priority claim or to add one by sending a communication to the IB or RO (R26bis.1.a PCT).

Section 1.2. Time limit

This correction or addition can be done (R26bis.1.a PCT):

  • in a delay of sixteen months from the earliest date from:
    • the earliest priority date before correction / addition and,
    • the earliest priority date after correction/ addition ;
  • in a delay of four months from the international filing date.

In addition, the deadline is deemed to be respected if the correction is received within one month of the RO or IB's declaration that the priority claim is deemed not to have been submitted (R26bis.2.b PCT, for correction only).

Section 1.3. Out of time

If a correction or addition arrives after the expiration of this period in the IB, but not more than 30 months from the priority, the IB may publish this information on payment of a fee (R26bis.2.e PCT).

Section 1.4. Impact of advance publication

Any request for correction / addition will be considered as not received if it occurs after the request of the applicant for advance publication of the application (unless this request for advance publication is withdrawn before the completion of the technical preparations, R26bis.1.b PCT, ie 15 days before publication, Guide for the applicant, §9.013).

Section 1.5. contents

Any correction or addition of priority must comply with the R4.10.a PCT and must mention, for the previous application:

  • the filing date (R4.10.ai PCT);
  • the deposit number (R4.10.a.ii PCT);
  • the place of the deposit:
    • The CUP State or WTO Member in which the deposit was made (R4.10.a.iii PCT)
    • the issuing administration (if regional application, R4.10.a.iv PCT) and at least one CUP Member State or WTO Member for which this application has been made (R4.10.b.ii PCT) if the regional application is not aimed at States of this type only;
    • RO (if international application, R4.10.av PCT).

Section 1.6. Effects on calculating deadlines

Any delay calculated from the priority date that has not expired is recalculated (R26bis.1.c PCT).

Chapter 2. Removing a priority

Section 2.1. Competent administrations

The applicant may withdraw a priority by sending a declaration toR90bis.3.c PCT):

  • at the IB;
  • at RO;
  • if a request for examination has been submitted (A39.1 PCT), at the IPEA.

This administration will transmit to the IB the date of receipt of this withdrawal.

Section 2.2. Time limit

This declaration must be received by the competent authority within 30 months of the priority (R90bis.3.a PCT).

Section 2.3. Tax

Withdrawal entails no costs (Guide for the applicant §11.056).

Section 2.4. Signature

The withdrawal declaration must be signed by all applicants (R90bis.5 PCT).

This signature may be replaced by the signature:

Nevertheless, the applicant considered as a common representative can not sign this declaration (R90.3.c PCT together R90bis.5 PCT): in this case, all applicants must sign.

Section 2.5. Power

Power is always required in this case by the competent authority (R90.4.e PCT): no renunciation of the administration is possible.

Section 2.6. Effects

2.6.1. Recalculation of deadlines

During a priority withdrawal, a certain number of deadlines may be impacted (those calculated from the date of the oldest priority).

Any delay impacted and not having expired is recalculated from the new priority date (R90bis.3.d PCT).

This may, for example, delay publication (A21.2.a PCT), provided that the withdrawal declaration reaches the IB before the completion of the technical preparations for publication (R90bis.3.e PCT).

If the withdrawal is made after the end of the technical preparations, a notice of withdrawal is published in the Gazette (R48.6.c PCT).

2.6.2. For designated / elected states

Withdrawal of a priority has no effect for designated Offices that have started to process or review the application as part of an early phase entry (R90bis.6.a PCT together A23.2 PCT or A40.2 PCT).

Chapter 3. Restoration of the right of priority

Section 3.1. Restoration by RO

3.1.1. Principle

For applications filed on or after April 1, 2007, it is possible to have the right of priority restored by the RO if the claimed priority is older than 12 months the filing date, but without exceeding 14 months (R26bis.3.a PCT).

3.1.2. Restoration conditions

In order to benefit from the restoration of its right of priority, the following conditions must be fulfilled:

3.1.3. States having made a reservation

The following states have made a Reserve according to R26bis.3.j PCT (ie do not allow recovery when they are RO):

  • BE Office for Intellectual Property (Belgium)
  • BR National Institute of Industrial Property (Brazil)
  • CO Superintendence of Industry and Commerce (Colombia)
  • CU Cuban Office of Industrial Property
  • CZ Office of Industrial Property (Czech Republic)
  • DE German Patent and Trademark Office
  • DZ Algerian National Institute of Industrial Property
  • GR Industrial Property Organization (OBI) (Greece)
  • ID Directorate General of Intellectual Property (Indonesia)
  • IN Patent Office (India)
  • IT Office of Patents and Trademarks
  • JP Patent Office of Japan
  • KR Korean Intellectual Property Office
  • NO Norwegian Patent Office
  • PH Intellectual Property Office (Philippines)

3.1.4. Effects

1) In case of restoration

Normally, restoration of the right of priority by RO produces effects in all designated / elected States, subject to the following conditions:

  • these did not make any stocks (R49ter.1.g PCT for the designated States, R76.5 PCT together R49ter.1.g PCT for elected states) (ie are not bound by RO decision or simply do not allow restoration):
    • BR National Institute of Industrial Property (Brazil)
    • CA Canadian Intellectual Property Office
    • CN State Intellectual Property Office of the People's Republic of China
    • CO Superintendence of Industry and Commerce (Colombia)
    • CU Cuban Office of Industrial Property
    • CZ Office of Industrial Property (Czech Republic)
    • DE German Patent and Trademark Office
    • DZ Algerian National Institute of Industrial Property
    • ID Directorate General of Intellectual Property (Indonesia)
    • IN Patent Office (India)
    • JP Patent Office of Japan
    • KR Korean Intellectual Property Office
    • LT Lithuanian Patent Office
    • MX Mexican Institute of Industrial Property
    • NO Norwegian Patent Office
    • PH Intellectual Property Office (Philippines)
    • TR Turkish Patent Institute
    • US Patent and Trademark Office
  • these apply a criterion as or less demanding than the criterion applied by the RO:
    • if the RO uses the criterion of "due diligence", The effect is for all designated / elected States (R49ter.1.a PCT for the designated States, R76.5 PCT together R49ter.1.a PCT for elected states);
    • if the RO uses the criterion of "intentional disobedience", The effect is for all designated / elected States applying the same criterion (R49ter.1.b PCT for the designated States, R76.5 PCT together R49ter.1.b PCT for elected states);
  • these would not have granted restoration (R49ter.1.c PCT for the designated States, R76.5 PCT together R49ter.1.c PCT for the elected states) and there was reason to doubt that the restoration was valid (R49ter.1.d PCT for the designated States, R76.5 PCT together R49ter.1.d PCT for elected states). The applicant must have the opportunity to comment.
2) In case of non-restoration

No State is bound by a decision of non-restoration (R49ter.1.e PCT for the designated States, R76.5 PCT together R49ter.1.e PCT for elected states).

Section 3.2. Restoration by the designated / elected state

3.2.1. Principle

For applications entering phase from 1 April 2007, it is possible to have the right of priority restored by the designated / elected Office if the claimed priority is older than 12 months the filing date, but without exceeding 14 months (R49ter.2.a PCT for the designated States, R76.5 PCT together R49ter.2.a PCT for elected states).

3.2.2. Restoration conditions

In order to benefit from the restoration of its right of priority, the following conditions must be fulfilled:

In the event of a refusal, the applicant must have the opportunity to comment (R49ter.2.e PCT for the designated States, R76.5 PCT together R49ter.2.e PCT for elected states).

3.2.3. States having made a reservation

The following states have made a Reserve according to R49ter.2.h PCT (for designated states, R76.5 PCT together R49ter.2.h PCT for elected states):

  • BR National Institute of Industrial Property (Brazil)
  • CA Canadian Intellectual Property Office
  • CN State Intellectual Property Office of the People's Republic of China
  • CO Superintendence of Industry and Commerce (Colombia)
  • CU Cuban Office of Industrial Property
  • CZ Office of Industrial Property (Czech Republic)
  • DE German Patent and Trademark Office
  • DZ Algerian National Institute of Industrial Property
  • ID Directorate General of Intellectual Property (Indonesia)
  • IN Patent Office (India)
  • JP Patent Office of Japan
  • KR Korean Intellectual Property Office
  • LT Lithuanian Patent Office3
  • MX Mexican Institute of Industrial Property
  • NO Norwegian Patent Office
  • PH Intellectual Property Office (Philippines)
  • TR Turkish Patent Institute
  • US Patent and Trademark Office

Chapter 4. Internal Priority Problem

Section 4.1. Principle

When claiming a priority of a national or international application in a PCT application, the question of internal priority arises.

Indeed, for State X for which a State X national application is claimed, the international application does not claim a priority within the meaning of CUP (indeed theA4.A.1 CUP indicates that the priority is for "other states").

TheA8.2.b PCT indicates that, for these situations, national law X overrides the provisions of CUP.

For example, the following situations may occur:

  • the internal law X does not propose an internal priority;
  • the internal law X indicates that the filing of a request under priority of a request X has the effect of withdrawing the national application (eg Germany, Applicant's Guide, Annex B1, DE)
    • accordingly, under R4.9.b PCTit is possible to withdraw certain designations at the depot (DE, JP, KR).

Section 4.2. Case of extension of the priority period

In addition, it is necessary to be particularly the filing dates of the priority application and the international application claiming priority.

For example, if a "US provisional" application is filed with the USPTO on July 14, 2000, and a PCT application is filed with the INPI on July 15, 2001, the UPC priority is valid (under extension granted in the event of a holiday A4.C.3 CUP but also under R80.5.i PCT).

But with respect to domestic priority, these provisions are inapplicable and it is very likely that the USPTO will deny priority claiming that the filing of the PCT application was made after the domestic priority period provided for by domestic law (A8.2.b PCT), the USPTO being open on July 14, 2001.

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