Priority right
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In patent, industrial design and trademark laws, 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 belongs to the applicant or his successor in title and allows him to file a subsequent application for the same invention, design or trademark and benefit, for this subsequent application, from the date of filing of the first application for the examination of certain requirements. 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 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.
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Types of priority rights
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. [1]
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 (Adobe PDF) on the WIPO web site).
Priority rights under other multilateral arrangements
Some priority rights are defined by a multilateral convention such as the European Patent Convention (EPC) or the Patent Cooperation Treaty (PCT). The Paris Convention only covers priority claims of applications in Paris Convention Contracting States. It does not cover priority claimed in a European patent application or in an international application (or PCT application).
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:
- A person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors 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. [4]
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. [5]
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). [6]
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. [7]
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. [8]
However, Rule 4.10(a) as amended with effect from January 1, 2000 does not apply to all designated Offices [9]. For instance, for the European Patent Office as designated Office, the old Rule 4.10(a) still applies, that is, rights of priority of first applications made in a WTO member not party to the Paris Convention are not recognised.
Internal priority rights
Some priority rights, called "internal priority rights", are defined by some national laws. 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. A bilateral agreement between a first and a second countries 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 application. These kinds of bilateral agreements usually involve at least one country not party to the Paris Convention.
References
- Reinhard Wieczorek, Die Unionspriorität im Patentrecht: Grundfragen des Artikels 4 der Pariser Verbandsübereinkunft, C. Heymanns, 1975 ISBN 3452178226
- Decision G 3/02 of 26 April 2004 of the Enlarged Board of Appeal of the European Patent Office [10]