UK: A Simple Guide To Priority In The UK

Priority is a core concept of patent law as the novelty and obviousness of an invention is judged as of the priority date. Unless priority is claimed from an earlier patent application, filed up to 12 months earlier, the priority date for an application is the filing date for the application. Where an application claims priority from an earlier application, any subject matter which is contained in the earlier application which is also contained in the later application will be entitled to the filing date of the earlier application.

However, claiming priority in the UK is subject to a number of detailed rules which are discussed in the following.

When must an application claiming priority normally be filed?

Ordinarily a patent application must be filed within 12 months of the filing date of the earlier application from which priority is claimed. If an application claims priority from multiple applications, it must be filed within 12 months from the filing date of the earliest filed application from which priority is claimed. If the UKIPO is shut (e.g. on a Saturday or Sunday or a public holiday) the 12-month deadline is extended to the next working day.

What if the application is not filed within the priority deadline?

With the permission of the Comptroller (and subject to meeting the necessary requirements), it is possible to extend the 12-month period by 2 months.

The following requirements must be met:

  • The request must be made and filed within the 2-month period
  • The request must be made on Patent Form 3
  • A fee must be paid (currently £40)
  • A late fee must be paid (currently £150)
  • The failure to file within the normal time must have been unintentional. Evidence proving that the failure was unintentional must be filed, unless the application is an application or a divisional application filed following a dispute to entitlement of an invention, in which case the requirement to file evidence is waived.

All the above steps for making a late declaration must be completed when filing the application. This includes formally requesting a claim to priority at the same time as filing the request for a 'late' filing of the application.

Can priority be claimed after an application has been filed?

Yes, priority can either be declared on filing or within 16 months from the earliest priority date.

However, a late claim for priority cannot be made if an application has been published. Normally publication will occur at 18 months from the date of filing. Thus, this is only a problem if a request for early publication has been made. If any such request has been made it should be withdrawn as soon as possible to ensure that the application is not published.

The following requirements must be met:

  • The request must be made and filed within the 16-month period
  • The request must be made on Patent Form 3
  • A fee must be paid (currently £40)

Can a late declaration of priority be made for a patent application filed as an application using the Patent Co-Operation Treaty (PCT(GB) applications)?

Yes, a late declaration for PCT(GB) applications can be made. Such a late declaration can be made within 1 month of entering the national phase. As the deadline for entering the national phase is 31 months from the earliest claimed priority, a late request for priority of a PCT(GB application) can be made up to 32 months from the earliest claimed priority date.

The following requirements must be met:

  • The request must be made and filed within the 1-month period from entering the national phase
  • The request must be made on Patent Form 3
  • A fee must be paid (currently £40)
  • A late fee must be paid (currently £150)
  • Evidence proving that the failure was unintentional must be filed, unless the application is an application filed following a dispute to entitlement of an invention in which case the requirement to file evidence is waived

Can the priority year be restarted?

In order to restart the priority year after a first application has been filed, it is necessary to:

  • Withdraw the first filing before publication.
  • No claims to priority from the first application may have been made.
  • The withdrawal must be unconditional and leave no rights outstanding, including the right to claim priority.
  • Withdrawal of the first application must occur on or before the day the second application is filed.
  • The first and second applications must be filed in the same country/jurisdiction.

Can priority be claimed from a US provisional application and utility models?

Yes, priority can be claimed from both a US provisional application and utility models.

Can priority be claimed from more than one application?

Yes, priority can be claimed from multiple applications.

If two applications are filed, Application A (for subject matter A) and Application B (for new subject matter B), priority must be claimed from both applications to cover both subject matter A and B in the third application (Application C).

Who is entitled to claim priority?

In order to validly claim priority, it is crucial that the subsequent application is filed in the name of the same applicant or their successor in title to the priority application. 

In the instance the priority document is assigned or transferred, it is essential that all the formalities have occurred before the subsequent application is filed.

Where there are multiple applicants, the applicant or applicants for an application claiming priority must be successors in title to all of the applicants of the priority application. Thus for example if a priority application is filed in the name of three inventors and a subsequent application is filed in the name of their employer, the applicant for the second application must be the successor in title to all three employees, and any formalities for completing the right to claim priority must be completed before the later application is filed. 

Alternatively, the second application could be filed in the joint names of the inventors and their employer and the right to the application could then be transferred to the employer after filing.

Can priority be claimed from an application which is refused or abandoned?

Yes, a loss of a priority application via abandonment, lapsing or refusal is not detrimental.

Can a priority claim be withdrawn?

Yes, a declaration of priority can be withdrawn before preparation for publication of a GB patent application are complete or any time before national phase entry in the case of an application made via the Patent Co-operation Treaty.

Can a priority claim be corrected?

Yes, it may be possible to delete or correct a priority claim if the original inclusion or mistake was due to a clerical error or mistake. Such a correction may be made at any time, either before or after grant.

There is no requirement for the correction to be obvious from the content of the documents on file. Correction of a priority claim should be contrasted with addition of a claim. Any application for the addition of a priority claim must be made within 16 months from the earliest priority date and must be completed before an application is published.

Is there a requirement to file a copy of the priority document?

Unless the Comptroller has access to the priority document (such as PCT applications where priority documents are submitted to WIPO), a copy of the priority document must be filed within the 16-month period, a deadline which can be extended by a further two months on request. Additional extensions of time may be available at the discretion of the Comptroller. If a certified copy of the priority application is not filed, the right to priority is lost.

There is no need to file a translation of a priority application written in a language other than English or Welsh, unless requested to do so by the Comptroller. Ordinarily, a translation will only be requested if assessment of a priority claim is necessary in order to establish the novelty or inventive step of an application.

Summary

To summarise, Applicants should aim to file applications within the prescribed 12-month priority period. Whilst late declarations of priority can be made, this costs more and leaves less time to correct errors in the priority claim. In addition, late declarations also prevent the option to file missing matter without re-dating.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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