What is priority (intellectual property)? Priority (intellectual property) evaluation

The priority period, i.e. the time during which the priority right exists, is usually 6 months for industrial designs and trademarks, and 12 months for patents and utility models. For patents and utility models, the priority period is often also called the "priority year".

In patent law, if a priority claim is valid, the filing date of the first application, also known as the "priority date", will be considered as the "effective filing date" for the purpose of examining the novelty, inventive step or non-obviousness of the later application claiming priority from the first application. In other words, in examining the novelty, inventive step or non-obviousness of the claims of the later application, the prior art considered is not all the public information that existed before the filing date (of the later application), but all the public information that existed before the priority date, which is the filing date of the first application.

theory

The basic purpose of the right of priority is to protect the interests of the patent applicant in his efforts to obtain international protection for his invention for a certain period of time, thereby alleviating the negative consequences of the territorial nature of patent law.

type

Convention priority

"Paris Convention priority", also referred to as "Convention priority" or "Union priority", is a "priority right" under a multilateral agreement as defined in Article 4 of the Paris Convention for the Protection of Industrial Property, adopted in 1883. Convention priority is perhaps the best-known priority right. It is provided for in Article 4A.(1) of the Convention:

• Any person who has duly filed in a country of the Union an application for a patent, a utility model, a design, or a trademark, or his successor in title, shall, for the purposes of filing applications in other countries, enjoy the right of priority during the periods hereinafter prescribed.

Article 4B of the Paris Convention describes the effect of the right of priority:

• Accordingly, any application subsequently filed in any other country of the Union before the expiration of the above-mentioned period shall not be invalidated by reason of any acts performed during that period, in particular the filing of another application, the publication or exploitation of an invention, the sale of copies of a design or the use of a trademark, nor shall such acts give rise to any third party rights or to any right of personal possession. Rights acquired by third parties before the date of the first application on which the right of priority is based shall be reserved in accordance with the national legislation of each country of the Union.

Article 2(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) together with the Paris Convention provides a "derivative" convention priority. That is, even if a WTO member does not ratify the Paris Convention, they are still required to comply with Articles 1 to 12 and 19 of the Paris Convention. (For a comparative list of the parties to the Paris Convention and the WTO member states, see PCT and Paris Convention Parties and WTO Member States on the WIPO website]).

Priority under other multilateral agreements

Certain priority rights are provided for by multilateral agreements, such as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT). The Paris Convention only includes priority declarations of applications filed in Paris Convention contracting parties, but not priority declarations in European patent applications or international applications (PCT applications).

European Patent Convention

Article 87(2) of the European Patent Convention provides for the EPC priority system, or more precisely, for the recognition of the priority right of the first application filed in a Contracting State of the Paris Convention:

• A person who has duly filed an application for a patent for an invention, a utility model, a utility certificate or an inventor's certificate in a Contracting State of the Paris Convention for the Protection of Industrial Property or in force in that Contracting State, or his successor in title, shall enjoy the right of priority when filing a European patent application for the same invention during a period of twelve months from the filing of the first application.

Article 89 of the European Patent Convention describes the effects of the right of priority:

• For the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2, the right of priority shall have the effect that the priority date shall be deemed to be the date of filing the European patent application.

As stated in the appeal proceedings before the EPO in decision G 3/93 of 6 August 2004 (fourth ground):

• Articles 87 to 89 of the European Patent Convention provide a complete and self-contained legal basis for claiming priority in European patent applications (cf. Judgment J 15/80, OJ EPO 1981, 213)

• The Paris Convention also contains legal details concerning the right of priority. The Paris Convention is not formally binding on the EPO. However, since the EPO, according to its preamble, constitutes a special agreement within the meaning of Article 19 of the Paris Convention, the EPO obviously does not wish to violate the basic principles concerning the right of priority set out in the Paris Convention (cf. Decision T 301/87, OJ EPO 1990, 335, reason 7.5).

Patent Cooperation Treaty

The Patent Cooperation Organization provides in Article 8(1) of its Treaty the possibility of claiming priority when filing an international application (PCT application):

• The international application may contain, as provided for in the Regulations to this Treaty, a declaration claiming priority from one or more applications filed in any Contracting Party to the Paris Convention for the Protection of Industrial Property or from one or more patents having effect in that Contracting Party.

PCT Rule 4.10(a) goes on to state:

• Any declaration referred to in Article 8(1) may, when filed in a country which is a party to the Paris Convention for the Protection of Industrial Property or in any country which is a member of the WTO but not a party to the Convention, claim the priority of one or more earlier applications filed in any country which is a party to the Paris Convention.

However, the amendment to Rule 4.10 from 1 January 2000 does not apply to all designated Offices. For example, for the European Patent Office as the designated Office, the old Rule 4.10(a) still applies, which means that priority claims for first applications filed in WTO member countries other than Paris Convention contracting parties are not recognized.

National priority

Certain priorities are called "national priority" and are provided for by the laws of some countries. Such national priority allows an applicant to claim the priority of the first application when filing a subsequent application in the same country. The Paris Convention does not include national priority.

Priority under bilateral agreements

Certain priority rights are also based on bilateral agreements. A bilateral agreement between two countries may allow an applicant to claim priority when filing a second application in a second country after filing an application in the first country. Such bilateral agreements usually involve at least one country that is not a party to the Paris Convention.