Formalities Manual (online version)

Chapter 6: Declaration of priority

Sections (6.01 - 6.66) last updated: March 2017.

Introduction

6.01

An applicant may seek to establish a “priority date” for an application in accordance with s.5 of the Patents Act 1977. He must normally do this at the time of filing under rule 6(1). If the claim to priority is not made at the date of filing it may be made later under rule 6(2) providing all the conditions of that rule are met. See para. 6.15-6.20.

6.02

The normal period for claiming priority is 12 months from the filing of the earlier application. Exceptionally permission may be granted for a late declaration of priority to be made under s.5(2B). In this instance the time period is 14 months from the filing of the earlier application. See para. 6.21-35

6.03

Part 6 of F1 should be completed with the relevant information. The country and date of filing should be given at the date of filing and a period of 16 months is allowed for the earlier application number to be provided under r.8(1) otherwise the priority declaration will be disregarded. This period is extendable by a period of two months under the provisions of r.108(2). A further discretionary extension may be allowed under the provisions of r.108(3).

6.04

The declared priority may be in respect of one or more patent applications in one or more convention countries (Annex 6A - List of Convention Countries)

6.05

When carrying out the preliminary examination (see Chapter 7), the Formalities Examiner should check any declaration to ensure it does not exceed the 12 month period prescribed in s.5(2A). The only exceptions to this rule will be when a rule110 certificate is in force at the time of filing of the later application ([see Chapter 12]) or when a late declaration under s.5(2B) has been allowed.

6.06

If a defective declaration is discovered, the applicant should be notified that the priority date is invalid and that he must provide a corrected and valid date within 2 months of the notification otherwise the priority claim will be disregarded.

6.07

A priority claim cannot be based upon an earlier ‘Design’ registration either in the UK or abroad. Any such claim should be rejected. However, the subject matter of a German “gebrauchsmuster” application, or an application for registration of a “Utility Model”, or a French “Certificate of Utility” may be considered a relevant application for the purposes of s.5(2).

6.08

A priority claim based upon a US Provisional application should not be objected to by the Formalities Examiner. Any questions with regard to the validity of such a claim to priority will be addressed when a challenge is made through the courts.

The right to claim priority

6.09

In order to make a claim to priority, the later application should have been made in the same name as the applicant of the earlier application, or by his successor in title (s.5(2)). Where the earlier application has more than one applicant then the later application must be made by all the applicants, or their successors in title. It is not sufficient to have one applicant in common (MOPP 5.19). To establish this connection, the Formalities Examiner must compare the applicants’ names on both cases.

6.10

Where there is no apparent connection, the Formalities Examiner should ensure that there is an explanation of the “new” applicant’s right to claim priority on the “open” part of the dossier by creating a minute annotated “New Applicant”. The applicant should also be informed that the right to claim priority may be open to challenge.

6.11

The derivation of right mentioned on the F7 may provide an explaination on how the “new” applicant derives the right to file the later application. Alternatively the information may be contained in a letter. Where there is no such indication on file, the Formalities Examiner must write to the applicant to obtain the required information.

6.12

A special letter has been prepared for this specific purpose and no other letter should be used. This letter is called (Annex 6B - LFL) and requests the applicant to provide an explanation of how they derive the right to claim priority. It also warns the applicant that the Comptroller may call for evidence to substantiate any statement given. The letter is retrievable via PROSE.

6.13

When the applicant’s response is received, the case should be referred to the Formalities Manager to either endorse the priority claim, or request further information if required.

6.14

If (after a suitable reminder), the applicant does not respond, the declared priority date should remain in place for publication purposes. A file-note should be placed on the dossier to draw to the Patent Examiner’s attention to the fact that the validity of the priority date is in doubt. A letter should be issued to the applicant noting that the requested information has not been filed and that the substantive examiner may further assess the validity of the priority claim during prosecution of the application.

Late claims to priority under Rule 6(2)

6.15

A claim to priority may be added after an application has been filed provided that the priority date is within the 12 months prior to the filing date of the later application and the request is made in the prescribed manner and within the time limit.

6.16

The request must be made on a Form 3 (plus fee currently £40) and the applicant should complete Part 4(ii). The request must be made within 16 months of the earliest priority date claimed. There must not be a request for accelerated publication on the case and if such a request has been made it must be withdrawn before the PPC date. If there is more than one late claim only one form and fee is required.

6.17

If the above conditions are met then the request will be allowed, there is no requirement for evidence. This also applies to s.89 cases. If the request is filed outside the time limit the letter at Annex 6D (i) - Rule 6(2) request out of time should be issued.

6.18

On receipt of a F3 (type ii) the Formalities Examiner should check the status of the application and ensure it is not set to ‘Formalities Complied With’ before referring it to the Formalities Manager for COPS action.

The Formalities Manager should record the new priority details using REC LAT and update the F1 to reflect the new priority details. The case should then be returned to the Formalities Examiner.

6.19

The agent/applicant should be notified of allowance using the letter at Annex 6D (ii) - Rule 6(2) request allowed. Any time periods which have already been calculated should then be amended and a further Preliminary Examination report issued where necessary. Standard Footnote 17 should be entered on COPS. The Patent Examiner should also be alerted to the change when necessary by a minute.

6.20

If by adding the late claim to priority the time for filing other requirements has passed and the application is effectively terminated then the applicant must request reinstatement of the application in order to continue.

Late declarations of priority under s.5(2B) and Rule 7(2)

6.21

If the priority that is being claimed is outside the usual 12 month period then an applicant can request that the office consider a late declaration of priority. This is done under s.5(2B).

6.22

Permission will only be granted if the priority date requested is within the 2 months immediately after the 12 months allowed under s.5(2A)(a). Any automatic extensions to the next working day will apply. The request must be supported by evidence to show why the later application was not filed within the normal 12 month period.

6.23

The request must be made on a Form 3 (plus fee currently £150) and the applicant should complete Part 4(i) and Part 5. The F3 must be filed within 14 months of the earliest priority date and should be accompanied by supporting evidence. ([see 10.34)).

6.24

There must not be a request for accelerated publication on the case and if such a request has been made it must be withdrawn before the PPC date.

6.25

On receipt of a F3 (type i) the Formalities Examiner should refer the request and evidence for consideration by the (Assistant) Head of Administration via the Formalities Manager. A preliminary examination may be carried out whilst the late declaration is being considered but importantly should be based on the application’s filing date or any substantiated priority date.

6.26

If no evidence has been submitted the Formalities Examiner should contact the applicant/agent and instruct them to file evidence within a specified period (usually two months). The applicant/agent should be reminded that if evidence is not filed the request cannot be considered. If consideration of the late priority declaration is likely to take some time then the Formalities Examiner should enquire whether the applicant wishes any pending action (for example: the search) to go ahead or to defer it until the issue of the late priority declaration has been resolved.

6.27

If the (Assistant) Head of Administration is satisfied that the evidence shows the failure to file the later application within 12 months of the priority date was unintentional then the late declaration will be allowed. The Head of Administration will record the decision and details of the priority claim on COPS using REC LAT.

6.28

The unintentional failure to file the later application in time should be taken to mean the GB application ‘in suit’ and not any other application relating to the subject matter which the applicant may have intended to file but failed to do in time - eg a PCT or EP application. (see decisions in Sirna Therapeutics Inc. BL O/240/05 and Abaco Machines (Australasia) Pty BL 0/309/06 and CH/2006/APP/0827 (Appeal)).

6.29

However, if the applicant intended to file an international application (PCT) claiming priority but has failed to do so within the 12 month period he may file his international application within 2 months from the end of priority year and request that a late declaration be allowed under the PCT Rules (see also 13.71-13.73). International Unit (as Receiving Office (RO)) will deal with these requests.

6.30

Alternatively, he may wait until the international application enters the National Phase and make the request using Form 3 within 1 month of entry r.66(3)(see 13.74). Formalities will deal with these requests in the same way as for a GB application (6.21 - 35) as (Designated Office (DO)). In these cases the international application must have been filed within 2 months of the end of the priority year.

6.31

Where the late declaration has been refused by WIPO there’s nothing to stop the request being made to the UK even though the same rules apply (unintentionality test). Any late declaration of priority allowed by WIPO should be maintained when an application enters the GB National Phase.

6.32

In the case of a new divisional application where a late declaration request was allowed in respect of the parent then no F3 or evidence is required. A request in writing should be made on the date of filing of the divisional application.

6.33

On return of the case the Formalities Examiner should check any time periods which may need to be recalculated and issue an amended Preliminary Examination Report if necessary. If no Preliminary Examination report has been issued then an amended filing receipt should be issued.

6.34

The agent/applicant should be notified of allowance of the request using the letter at Annex 6G - Late declaration of Priority allowed. Standard Footnote 16 should be entered on COPS. The Patent Examiner should also be alerted to the change when necessary by a minute.

6.35

If the request for a late declaration of priority is refused and the applicant does not withdraw the application it will continue with the earliest date of the filing date or any valid priority date.

Filing and checking of foreign priority documents

6.36

A period of 16 months is allowed from the earliest declared priority date for an applicant to supply the office with a certified copy of the foreign application (r.8(2)). For applications filed under s.15(9) (see Chapter 14). If more than one priority is claimed, then all the priority documents must be supplied within the 16 month period.

6.37

The period for filing the priority document(s) may be extended under the provisions of r.108(2). A further extension may be allowed under the provisions of r.108(3). When the certified priority document is received, two things should be checked:

(a) that it has been received within time (see 6.36), and,

(b) that the details on F1 match those given on the priority document for example the filing date.

6.38

If the priority document has not been filed within the correct time then action should be taken in accordance with 6.35 - 6.58.

6.39

If any of the priority document/F1 information differs, then the Formalities Examiner should contact the agent to determine where the error lies. If the error is on the F1, a request in writing may be required to correct F1 (see 6.60- 6.61). Where the error lies in the priority document a correct copy should be requested. If the filing period has expired, then the application should be referred to the (Assistant) Head of Administration via the Formalities Manager.

6.40

When a priority document has been filed, but is illegible, the agent should be contacted and asked to provide a fresh copy within a specified period. If the fresh copy is also illegible and the foreign patent office is unable to provide a more suitable copy, the matter should be brought to the Patent Examiner’s attention for him/her to decide on what further action should be taken.

6.41

Both Belgian and Hungarian priority documents show two numbers which could be taken for the application number. The correct application number on a Belgian priority document is the number which is preceded by a serial number and an oblique stroke,”viz 6/”, which can be found on what appears to be the application form, normally the third page. The number shown under BREVET D’INVENTION which is the perforated number shown on each page of the specification is the publication number, not the application number, and if shown on F1, a correction will have to be made. (See 6.60)

6.42

The correct application number on a Hungarian priority document is the number given at the top left hand side of the Hungarian certificate. The number which appears lower down in the certificate is a registration number for internal use only and may change in the course of the proceedings.

6.43

If the agent advises the office that the priority document is incorrect in some respect, such as wrong details, if the prescribed period has not expired, he should be informed urgently, by either letter or telephone that a corrected or correct document must be filed within the prescribed period. If, at the time the agent notifies the office, the prescribed period has expired, the matter should be referred to the (Assistant) Head of Administration via the Formalities Manager.

6.44

If it is evident that a page or drawing is missing from the priority document, the agent should be contacted by telephone to obtain a corrected copy.

6.45

If the prescribed period has expired, the application should be referred to the (Assistant) Head of Administration via the Formalities Manager.

6.46

Failure to supply a certified copy of the priority document(s) within the period prescribed by r.8(2) as extended by r.108(2), will result in the loss of the relevant priority date and action will need to be taken in accordance with 6.62-6.63 below. A further extension may be allowed under the provisions of r.108(3).

6.47

However, where a copy of the priority document is not available because of known delays at another patent office or as a result of a natural disaster, it may be possible to accept a document verified other than by the authority with which it was filed. Such applications should be referred to the (Assistant) Head of Administration via the Formalities Manager for consideration.

6.48

Where the priority document is in a language other than English or Welsh a translation will only be required where the Patent Examiner directs and in these cases the Patent Examiner will request the translation. See paragraph 6.52 et seq below.

6.49

When the priority document is acceptable any signatures appearing on it should be redacted and the OLFI annotation applied to the clean copy so that the document will appear on IPSUM.

Priority documents in electronic format

6.50

Priority documents supplied electronically or obtained at filing via the Priority Document Access Service (PDAS) will be imported into the dossier by Document Capture and E Filing Security Section and appear as a paper filed document. If an applicant indicates (in writing) after filing that a priority application is available via PDAS then a message “PDAS REQ” should be sent to the PDAS OSF mailbox. On successfully obtaining the priority document from WIPO, it will be imported into the dossier.

See also File on-line

Applications claiming priority - transfer of document

6.51

When an earlier priority is claimed and a copy of the priority application is kept at the office, a certified copy is not required from the applicant under r.8(4). In such circumstances the Formalities Examiner should use the Assembler to place a copy of the priority application on the later application see also patents rule112

6.52

A priority document must represent only those documents filed on the date of filing. In addition, a copy of every document filed on the date of filing must always remain on the priority application. In this way, a set of documents is always available for COC purposes.

Translation of foreign priority document

6.53

Where the certified copy of the priority application is not in English or Welsh, the Patent Examiner may (under r.9) request the applicant to provide a translation or a declaration to the effect that the new application is a complete translation of the priority document.

6.54

The Patent Examiner will only request a translation of the priority document where the validity of the priority claimed from the earlier application is relevant in deciding whether or not the invention involves an inventive step. This will not be until the substantive examination stage.

6.55

Where the Patent Examiner decides that a translation/declaration is required he will issue a letter advising that a translation/declaration will need to be filed and specifying a period of time within which it must be filed. This will normally be the same as the time given for replying to the examination report.

6.56

A declaration may state that the application in suit is a complete translation of the priority document or it may be qualified by a list indicating any minor differences. The declaration may be signed by the applicant or agent. An example of an acceptable declaration is:

I, (name, address, position of person making the declaration) declare that UK patent application (number) filed on (date) in the name of (applicant) entitled (title) is a complete translation into English or Welsh of the (language) priority patent application (number) filed on (date) without differences between the (language) language text and the English/Welsh text.

6.57

When the translation/declaration is filed it should be referred to the Patent Examiner. The translation does not need to be verified. If the Patent Examiner has doubts about the accuracy of the translation when it is filed he may request evidence of its accuracy under rule 115.

6.58

If the translation/declaration is not filed within the specified time the priority claim will be disregarded. See paragraph 6.64.

Withdrawal of a priority claim by amendment

6.59

A declaration of priority in an application may be withdrawn at any time before grant. Such a request should be made in writing. If the change is being made by amendment, it was correct at the time of filing but something has changed, then a reason must be given for the change. Very occasionally, an applicant may wish to amend an application by cancelling the declaration of priority in response to an official objection made by the Patent Examiner during substantive examination. This is most likely to occur on Divisional applications and a request should be made in writing.

Deleting or changing a priority claim by correction

6.60

A priority claim can be deleted or corrected under s.117 if the mistake in its details was due to a clerical error. However, if only the priority document file number is to be corrected then a request in writing will be sufficient to correct it.

6.61

Any such request should be referred to the (Assistant) Head of Administration via the Formalities Manager for consideration. If a request to correct or delete a claim to priority is allowed, the (Assistant) Head of Administration will annotate the F1 accordingly. Directions will be given as to the necessary COPS action.

It is not permitted to delete the claimed priority to artificially extend deadlines which have expired.

Pre publication cancellation of a priority claim

6.62

Where a priority claim is to be cancelled through failure to supply the priority document within the prescribed period (see 6.36 above), or is to be withdrawn following a request to amend the application (see 6.59 above), the following action should be taken:

(a) Refer the application to the (Assistant) Head of Administration (written request) or the Formalities Manager (failure to supply the priority document) for authorisation of the action and annotation of F1;

(b) After authorisation, the Formalities Examiner should inform the applicant/agent of the cancellation action through the issue of the standard LFH letter (see Annex 6C - LFH);

(c) The priority document(s) and any relevant translation(s) should be moved to the closed part of the dossier.

(d) COPS action should be carried out as directed;

(e) In the case of a written request, add the appropriate footnote on COPS.

(f) A minute indicating the new earliest date should be sent to the Patent Examiner. Where more than one claim to priority was made, this would be the next earliest priority date or the filing date if there is no priority.

6.63

It should be noted that a change to a declaration of priority before ‘A’ Publication will result in all time periods being recalculated from the new earliest date except those time periods which have already expired.

Post publication cancellation of a priority claim

6.64

Where a priority claim is to be cancelled through failure to supply either a translation of the priority document or an appropriate declaration (see 6.56 above), or is to be withdrawn following a request to amend the application (see 6.59 above), the following action should be taken:

(a) Refer the application to the (Assistant) Head of Administration (written request) or the Formalities Manager (failure to supply the translation) for authorisation of the action and annotation of F1 for example; The deletion of the priority details and a register entry should be actioned. The following wording should be added to the register

“Declaration of priority from application number *** filed in ***(country) on **** (date) has been cancelled subsequent to publication of the application in suit.”

(b) After authorisation, the Formalities Examiner should inform the applicant/agent of the cancellation action through the issue of the standard LFH (A) letter (see Annex 6E - LFH (A));

(c) A minute should be sent to the Patent Examiner indicating that the claim to priority has been cancelled.

6.65

It should be noted that a change to a declaration of priority after ‘A’ Publication will not result in a change to the time periods for the application.

6.66

The validity of the priority claim will be considered by the Patent Examiner only if it affects whether a document can be cited or not. If the Examiner considers that the priority claim is not valid this will make no difference to the declared priority date, and the application will retain the earliest declared priority date for publication and all other purposes. It should not be deleted under these circumstances.