Section 5: Priority date
Sections (5.01 - 5.32) last updated: January 2018.
s.130(7) is also relevant
This section is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC. Articles 87 and 88 and rule 53 of the EPC and Article 8 of the PCT appear to generally correspond to s.5. Relevant requirements are prescribed in rr.6 to 9. The principles of the section derive from Article 4 of the Paris Convention for the Protection of Industrial Property.
Section 5 was amended by the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 3204) to incorporate the principles of Article 13 of the Patent Law Treaty. The amended section applies to applications made on or after 1 January 2005; for earlier applications, the provisions of section 5 prior to the Order coming into force apply. These earlier provisions are indicated in the text where they may be relevant to pending applications made before 1 January 2005.
|For the purposes of this Act the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in any such application is, except as provided by the following provisions of this Act, the date of filing the application.|
The priority date of all matter (whether claimed or not) in an application is, prima facie, the date of filing of the application. The onus is therefore on an applicant who wishes to claim an earlier priority date to comply with the specified conditions see 5.04
|If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A)(a) or (b) below, then-
(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them;
(b) the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.
|The periods are-
(a) the period of twelve months immediately following the date of filing of the earlier specified relevant application, or if there is more than one, of the earliest of them; and
(b) where the comptroller has given permission under subsection (2B) below for a late declaration to be made under subsection (2) above, the period commencing immediately after the end of the period allowed under paragraph (a) above and ending at the end of the prescribed period.
|The applicant may make a request to the comptroller for permission to make a late declaration under subsection (2) above.|
|The comptroller shall grant a request made under subsection (2B) above if, and only if-
(a) the request complies with the relevant requirements of rules; and
(b) the comptroller is satisfied that the applicant’s failure to file the application in suit within the period allowed under subsection (2A)(a) above was unintentional.
If the date of filing of an earlier application is to be treated as the priority date of some or all of the matter in an application in suit, the following conditions must be met:-
(a) a declaration must be made, and this must comply with the “relevant requirements” as set out in rr.6 and 7 see 5.07-5.13;
(b) the earlier application should have a date of filing not more than twelve months earlier than that of the application in suit see 5.18;
(c) an applicant can nevertheless request permission from the comptroller to make a declaration of priority in respect of an application filed within the period prescribed by r.7(1) (i.e. within two months of the expiry of 12 months from the date of filing of the earlier application) but such permission will only be granted when the request complies with r.7 and the comptroller is satisfied that failure to file the application within the 12 month period was unintentional see 5.26.3-4;
(d) the earlier application must have been made by the same applicant as the application in suit or by his predecessor in title see 5.19-19.2; and
(e) it must be a “relevant application” see 5.30.
The earlier application must also be one which is not disregarded under the provisions of s.5(3) see 5.27- 5.28.5. However so long as it has a filing date, the outcome of the earlier application is not relevant, and it may serve to establish a priority date even if it is subsequently withdrawn or refused.
The priority date conferred by an earlier application cannot be earlier than the date on which it was filed, even if the authority with which it was filed has allowed it to be antedated, for example to the date on which it was shown at an exhibition (La Soudure Electrique Autogene SA’s Application, 56 RPC 218).
Priority may be claimed from any number of earlier applications. So long as they are all “relevant applications” see 5.30 there is no requirement that they should have been filed under the same national law or international agreement. However it should be remembered that the periods for complying with r.6 to 8 see 5.08-5.12 are measured from the date of the earliest declared application see 5.16, and that all necessary documents should be supplied within this period.
|Where the earliest priority date to be claimed is not more than 12 months before date of filing of the application in suit|
s.5(2A), r.6(1), r.6(4) is also relevant
Where the earliest priority date to be claimed is not more than 12 months before the date of filing of the application in suit, the declaration should be made at the time of filing. However, there are possibilities to make a declaration after filing the application see 5.07.1. In all cases, the declaration must state the date of filing of the (or each) earlier application and the country it was filed in or in respect of. Such a declaration is made by completing the relevant part of Form 1. Errors or mistakes in declarations can be rectified by correction (see 117.19). In order for the earlier application to be uniquely identified, it is advisable to give the application number of that application at the earliest time that it is available although this information may be added later see 5.08.
r.6(2), r.6(3), PR Sch.4. part 1 is also relevant
If a declaration is not made at the time of filing, it can be made (or another declaration can be added) at any time up to sixteen months after the earliest priority date claimed provided that the declaration is made on a Form 3 accompanied by the prescribed fee and a request to publish the application under section 16(1) has either not been made or any such request was withdrawn before the preparations for publication of the application had been completed. This sixteen month period cannot be extended. The provisions allowing a declaration of priority to be made later than the filing date only apply to applications filed on or after 1 January 2005.
|Where the earliest priority date to be claimed is more than 12 months before date of filing of the application in suit|
s.5(2A)(b), s.5(2B), r.7(1), s.5(2C)(a), s.5(2C)(b), r.7(8) is also relevant
An applicant may request permission to make a declaration of priority in respect of an application filed in the two months following the expiry of the period specified in s.5(2A)(a) but the comptroller shall only grant such permission if:-
(a) the permission is requested in accordance with rules, and
(b) the comptroller is satisfied that failure to file the application within the time specified in s.5(2A)(a) was unintentional see 5.26.4, and
(c) either there is no request for accelerated publication under section 16(1), or if a request for accelerated publication was made, it was withdrawn before the preparations for publication were completed.
PR Sch. 4, Part 1, r.7(4), r.7(6) is also relevant
Except for the situation set out in 5.07.4, the request must be made on Form 3 and must be filed before expiry of the two month period prescribed in r.7(1), which cannot be extended. The declaration must be made at the time of filing the request and the reason why the application was not filed within the period allowed by s.5(2A)(a) must be stated. Evidence supporting that reason must also be provided. Where that evidence does not accompany the request, the Comptroller must specify a period within which the evidence must be filed. Where an international application has entered the national phase, a request may be made under s.5(2B) within one month of the date the national phase of the application begins.
If, however, the application in suit is a new application filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9), the request may be made in writing instead of on Patents Form 3, no evidence need accompany the request, and both the new application and the request may be made after the end of the two-month period prescribed in r.7(1) but must be made on the same date.
r.8(1)-(2), r.8(5), r.21, PR Sch. 4 is also relevant
The application number of the priority application must be supplied within sixteen months (extendable in accordance with r.108(2) or (3), see 123.34-42) of the declared priority date. Moreover, except in the circumstances referred to in paragraph 5.09, a copy of the earlier application, either certified by the authority with which it was filed or otherwise verified to the satisfaction of the comptroller, should also be supplied within this period. Where the application claims an earlier date of filing, these conditions should be complied with within two months of the date of filing (or later in accordance with an extension under r.108(2) or (3) and (4) to (7), see 123.34-41) if the sixteen month period has already expired (but see 5.09), except if the new application is filed less than six months before the compliance date, in which case these conditions should be complied with on the filing date (extendable under r.108(2) or (3) and (4) to (6)). In the case of a divisional application the sixteen month period is automatically extended if that period has been extended in respect of the earlier application. Failure to comply with these conditions within the prescribed period cannot be rectified under s.117 (Klein Schanzlin & Becker AG’s Application  RPC 241, see 117.01.
r.8(3) is also relevant
However, if an application specified in the declaration is an application for a patent under the Act, an international application for a patent which was filed at the Office, or any other application of which a copy has been filed pursuant to a declaration of priority in respect of another application under the Act, then, under r.112 any necessary certified copy will be prepared in the Office without the applicant having to request it or pay any associated fee. If the earlier application has been withdrawn or treated as withdrawn, documents may be transferred to serve as priority documents for the application in suit (see 15A.18). In all cases, the applicant should inform the Office of the number of the file on which the earlier application is to be found.
r.8(4), r.8(5), s.81(3)(c) is also relevant
Where the application in suit is an international application for a patent (UK), the requirements referred to in 5.07 and 5.08 are regarded as having been complied with to the extent that the requirements of r.4.10(a) and (b), subject to rules 26bis.1 and 26bis.2(b), and of rule 17.1 of the PCT have been fulfilled. (A copy of the priority documents is supplied to the Office by the International Bureau). Likewise if the application is one converted from a European application under s.81, these conditions are treated as having been met to the extent that r.52 and 53 of the EPC have been complied with.
Applications filed on or after 1 January 2005:
r.9 is also relevant
Translations of foreign-language certified copies of priority applications (or declarations that the application in suit is a complete translation into English of the priority application) will only be required where the matters disclosed in the earlier application are relevant to the determination of whether or not an invention, to which the application in suit relates, is new or involves an inventive step. Where an examiner considers that a translation is necessary, a direction will be issued to the applicant and a period for complying with the direction will be specified. The period is extendable under s.117B and r.109. Failure to comply with a direction will result in the declaration made for the purposes of s.5(2) being disregarded.
r.115 is also relevant
There is no requirement for any translation filed in response to a direction of the comptroller under r.9(1) to be verified. Where is there is a genuine doubt with respect to the accuracy of a translation the comptroller may notify the applicant of the reasons for his doubts and require evidence to establish the accuracy of the translation.
Applications filed before 1 January 2005:
PR 1995, r.6(6), pre- RRO is also relevant
Loss of priority
If any of the requirements of rr.6-9 are not met in respect of an application declared for priority purposes, then the declaration is invalid in respect of that application and any rights which would have derived from it are lost. If (but only if) preparations for publication have not yet been completed, the declared priority date may be affected see 5.16.
Declared priority date
s.130(1) is also relevant
“Priority date”, as used in the Act, is defined in s.130(1) as “the date determined as such under section 5”, and is a property ascribed to the invention(s) and other matter contained in an application but not to the application itself. Instead the term “declared priority date” of an application is defined (in r.3); this date confers no rights, but serves only as a “marker” from which various time limits are measured. It may be noted that while the contents of an application may have several priority dates (one of which may be the filing date), an application can only have one declared priority date, and may have none (in which case prescribed periods are measured from the filing date).
r.3 is also relevant
In the case of an application made under the Act, “declared priority date” means the date of filing of the earliest relevant application specified in a declaration made for the purposes of s.5 where the date has not been lost or abandoned, or the declaration withdrawn, before the completion of preparations for publication. Thus for example if a certified copy of the (or the earliest) declared application is not supplied within the prescribed period (see 5.08), then not only is the priority date claimed from that application lost, but also, since the application in suit will necessarily not yet have been sent for publication, that date will cease to be the declared priority date; its place is taken by the next earliest declared application or, where there is none, the filing date, and time limits and dates, including the date when publication is due, are reckoned from this new date. On the other hand, where a translation is required and it (or a declaration that the application in suit is a complete translation into English of the priority application) is not filed within the specified period (see 5.11-5.13.1), then although this will result in the priority claim being disregarded, if (as will generally be the case) this takes place after completion of preparations for publication, the declared priority date will remain unchanged.
Similarly, the declared priority date of an international application is the earliest priority date which has not been lost or abandoned under the provisions of the PCT, i.e. before entering the national phase (see 89A.04). And in the case of a converted European application it is the earliest priority date still extant when the comptroller directs under s.81 that it be treated as an application under the Act.
Period for claiming priority
In accordance with Article 4C of the Paris Convention, priority may be claimed from an earlier application if the application in suit has a date of filing not more than twelve months later than that of the earlier application, and this is reflected, via s.5(2), in s.5(2A)(a). However if this period expires on an excluded day or on a day which is certified as one on which there was an interruption under r.110(1) (see 123.43) then the period is extended to include the first following day which is not excluded or certified. The period may also be extended under r.111 in particular cases affected by a failure or undue delay in a communication service (see 123.46-47). The period may also be extended under r.107 in particular cases where the circumstances of r.107(3) exist (see 123.06-10). In no other circumstances may the twelve months period be extended – although in limited circumstances it is possible for the date of filing of the application in suit to be outside the twelve months period; see 5.07.2 to 5.07.3, and 5.26.2 to 5.26.4.
For priority to be claimed, the person making the application in suit must either be the same person who made the earlier application or must be his successor in title. Furthermore, for priority to be claimed in the circumstances where the earlier application has more than one applicant, the application in suit must be made by all of the same applicants, or their successor(s) in title. It is not sufficient if the application in suit is made by only one or some of the earlier applicants, as confirmed by the Patents Court in Edwards Lifesciences AG v Cook Biotech Inc  EWHC 1304 (Pat);  FSR 27.
Where the applicant of the application in suit is not the applicant of the earlier application, the applicant for the application in suit must have acquired from the earlier applicant (or applicants) the right to be granted a patent, for example by virtue of employment or by assignment. It does not matter if the original applicant retains some rights in the earlier application – he may for instance have assigned the rights to some only of the matter contained in that application, or have assigned only the right to apply in certain countries – so long as he has transferred to the present applicant the right to be granted a patent on the application in suit. In order for the declaration of priority to be valid at the time it is made, i.e. at the time of filing the application in suit, the transfer must already have taken place. This was also confirmed in Edwards Lifesciences v Cook Biotech.
In KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors  EWHC 1487 (Pat); Arnold J considered whether an application having two applicants could validly claim priority from an earlier application made by only one of those applicants, where no formal assignment of priority rights had been made. He concluded that the circumstances surrounding the filing of the later application inferred that the earlier applicant had agreed by conduct to transfer part of their interest in the invention to the second applicant, and that was sufficient to make the second applicant a successor in title for the purposes of claiming priority. It follows that, where an application names a further applicant (or applicants) in addition to the applicant(s) named on a priority application, a formal assignment may not necessarily be required for the priority claim to be valid.
Priority date of invention or other matter
The test for deciding whether an invention is supported and sufficiently described by matter disclosed in an earlier application is basically the same as that for deciding whether a claim of a specification is supported and sufficiently described by the description (see 14.60-14.104 and 14.142-14.156).
s.130(3), s.125(2) is also relevant
As Article 4H of the Paris Convention makes clear, it is not necessary that the invention be found in the claims of the earlier application. In order to determine whether there is support for an invention or other matter in the earlier application, everything claimed or disclosed (other than by way of disclaimer or acknowledgement of prior art) in the earlier application may be taken into account (see 14.171.1) for practice relating to what is included in an abstract). Support may not however be derived by combining the teaching of separate applications unless one of them contains directions to do so.
The priority date of a feature or combination of features is the date of the earliest application whose disclosure supports that feature or combination and if different ways of putting an invention into practice were disclosed at different dates, they will have different priority dates, even if they are covered by a single claim.
The earlier application must disclose the particular combination of features which make up the invention and also provide an enabling disclosure of that invention (Asahi Kasei Kogyo KK  RPC 485). Thus, in Biogen Inc v Medeva Plc  RPC 1 it was confirmed that the same test for sufficiency of disclosure applies whether directed to an earlier application for determining whether a claim is entitled to a priority date or to the description of the application or patent in suit under sections 14(3) and 14(5)(c). The Court of Appeal adopted this approach in Pharmacia Corp. v Merck & Co. Inc.  RPC 41, in which it was held that the technical contribution to the art contained in the earlier application must justify the claimed monopoly in the application in suit, with the result that the earlier application contains sufficient disclosure to constitute an enabling disclosure across the entire width of the claim. In the case in question, the application in suit claimed a narrower range of compounds than that disclosed in the earlier application. The court held that the priority claim was not supported, since the earlier application did not provide an enabling disclosure concerning the technical contribution to the art made by selecting the subclass of compounds claimed in the application in suit.
In Hospira UK Generics (UK) Ltd (t/a Mylan) v Novartis AG  EWCA Civ 1663 the Court of Appeal held that claim 7 of the Novartis patent was not entitled to priority because the disclosure of the priority document was either too broad or too specific. Claim 7 contained features relating to a drug for the treatment of osteoporosis, an intravenous mode of administration, a dosage size of about 2-10 mg and a dosing interval of about once a year. Although the priority document contained a passage disclosing “2-10 mg once a year”, it did not tell the reader that this dosage range would be suitable no matter what condition was being treated or mode of administration was used. The passage instead suggested that, dependent on the method of administration and condition being treated, some doses within the given range may be suitable. The priority document also contained an example (example 5) specific to intravenous administration which showed that 4 mg, once a year was effective in treating post-menopausal osteoporosis. Example 5 did not however teach anything about other doses at that dosage interval and so the other doses claimed were not supported by the disclosure in this example.
In Evans Medical Ltd’s Patent  RPC 517, Laddie J held that what is important is what the document teaches, not how the contents got there, saying “if an inventor through clever foresight or lucky guess work describes something which works and how to do it, his disclosure is enabling”. Nevertheless, in a case relating to a second medical use invention, the Patent’s Court in Hospira UK Ltd v Genentech Inc  EWHC 1094 held that the earlier application must show that the claimed therapeutic effect was plausible. If this was not the case, then the earlier disclosure could not be considered enabling (see 4A.29.1).
The criteria to be applied can be said to be similar to those used to decide whether a claim is anticipated by the disclosure of an earlier document (see 2.03- 2.20). Thus if a priority document is silent about any essential element for which a patent is sought, the right to priority cannot generally be established. In particular, if a claim in a priority document is broad enough to cover a particular specific technical feature, it does not follow that it discloses that feature for the purpose of claiming priority. On the other hand, a feature which would necessarily be present when the teaching of the earlier application is put into practice may be treated as having been disclosed by implication (c.f. 2.07). In Letraset Ltd v Rexel Ltd  RPC 175 at pages 195-7, a claim which included the feature that adhesion between indicia and a carrier sheet was breakable by local stretching of the sheet was held to be fairly based on a provisional specification which was silent on this feature, since it was in fact something which could be shown to happen when the material described in the provisional specification was made and used.
This approach is also consistent with the Opinion of the Enlarged Board of Appeal in Requirement for claiming priority of the “same invention”  EPOR 17 (G 2/98), in which it was held that implicit disclosure in the earlier application may be taken into account, so that a priority claim is valid if the skilled person can derive the subject matter of the claim of the application in suit “directly and unambiguously, using common general knowledge, from the previous application as a whole”. This would appear to be consistent with the earlier decision in Biogen/Human beta-interferon  EPOR 451 (T207/94), in which it was held that the disclosure of the earlier application was enabling in respect of the claims of the later application, despite the fact that the disclosure would have required a non-negligible amount of work on the part of the skilled person to achieve the invention as claimed in the later application. This was acceptable since the work required by the skilled person would have been quite feasible given the existing state of the art. Nevertheless, the criteria for assessing a valid priority claim are not identical to those used when considering anticipation. As the Enlarged Board concluded in G2/98, priority can only be validly claimed where the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. However it is also possible for a single claim to set out a number of alternative subject matters (an “OR”-claim) which may each be entitled to different priority dates – see below.
A claim in a patent application can have multiple priority dates, see 125.08. In Novartis AG v Johnson & Johnson  EWHC (Pat) 1671, Kitchin J referred to G 2/98 and said that different priority dates can be assigned to different parts of a patent claim where those parts represent a limited number of clearly defined alternatives and those alternatives have been disclosed by different priority documents. This is known as partial priority.
In Nestec SA & Ors v Dualit Ltd & Ors  EWHC 923 (Pat) the claims of a patent were held to lack novelty over the disclosure of the document from which it claimed priority. In this case the claims of the patent were found not to be entitled to the claimed priority date, as they covered a whole range of different arrangements (i.e. not a limited number of clearly defined alternatives) – some of which were not disclosed in the priority document. The earlier document was published, thereby forming part of the state of the art under s. 2(3), and anticipated the claims of the patent (see 5.26, 15.22). This situation is sometimes referred to as ‘poisonous priority’. It is important to note that this situation can also arise when the state of the art is not the priority document itself but a published application sharing a priority claim, for example in a divisional application (see 15.22).
This issue of partial and poisonous priority was considered by the EPO Enlarged Board of Appeal in G 01/15. In its decision, the EBA concluded that, where claims are generalised, they may be conceptually divided into two parts corresponding to that aspect which was disclosed in the priority application and is entitled to partial priority, and that aspect which was not disclosed and is not entitled to priority. Following this decision, the previous requirement (arising from G 02/98) that a claim must provide a “limited number of clearly defined alternative subject-matters” to be allowed partial priority, no longer applies at the EPO. Decisions of the Enlarged Board of Appeal are not binding on UK courts, although they are persuasive (see 0.09), so it remains to be seen whether the UK courts adopt this approach or continue with the approach set out in Nestec above. In the meantime, examiners remain bound by, and must therefore follow, the approach in Nestec above.
Examination of claim to priority
Application filed within 12 months of earliest priority date claimed
Declaration made at the time of filing
r.23, r.6(1), r.24(1), r.6(4), r.6(5) is also relevant
Where the declaration of priority is made at the time of filing of the application in suit, the formalities examiner must determine during the preliminary examination whether the requirements of r.6 to 9 have been met and whether any priority date claimed is more than twelve months before the filing date of the application in suit; any other discrepancies noticed in the declaration or the priority documents should be reported at this stage (see 15A.13-15A.17) . In general no comment should be made on the content of the earlier application, except that the applicant should be informed if it is so different from the application in suit that it appears likely that he has declared and/or filed the wrong earlier application. The question of whether the invention is supported by matter disclosed in the earlier application should be considered only when this is necessary in order to determine whether or not a given document forms part of the state of the art (see 18.15-18.17) Examiners should be aware that if the declaration of priority is found invalid the priority document itself, if published, may form part of the state of the art (see 5.25.2). Even if it is found that an invention is not supported by an earlier application, the “declared priority date” should remain unchanged (see 5.15).
Declaration made after time of filing
Where a declaration is made or added after the date of filing of the application in suit, the formalities examiner must ensure the Form 3 was filed within the sixteen month period prescribed in r.6(2)(b), that option (ii) on part 4 of the Form has been correctly indicated, and that the application has not already been published. If the applicant requested accelerated publication b but the preparations for publication have not yet been completed, the publication cycle should be suspended and the applicant given the opportunity to withdraw the request to enable the priority declaration to be accepted. The criteria are otherwise as given in 5.20-25 above, and, if the declaration is validly made, the priority date must be recorded and other dates recalculated as necessary.
Application filed more than 12 months after earliest priority date claimed
r.7 is also relevant
Whenever permission to make a late declaration of priority is made on a Form 3, the formalities examiner must check:-
(a) that option (i) is correctly indicated on part 4 of the Form;
(b)(i) that for domestic applications both the request and the application in suit were filed before expiry of the two-month period prescribed in r.7(1) (unless the application in suit is a new application filed under section 8(3), 12(6) or 37(4) or as mentioned in section 15(9), in which case see 5.07.4;
(b)(ii) that for PCT applications, the application in suit was filed before expiry of the two-month period prescribed in r.7(1) and the request was filed within one month of entry into the national phase;
(c) that the reason for failing to file the application within the period specified in s.5(2A)(a) is entered into part 5 of the Form and is supported by evidence;
(d) that the declaration has been correctly made in part 6 of the Form.
Where a request is correctly made in compliance with rules and the comptroller is satisfied that the failure to file the application in suit within the period allowed by s.5(2A)(a) was unintentional, he shall grant the permission and treated the declaration as valid. The priority date should be recorded and other dates recalculated as necessary, but the date of filing of the application in suit will remain the date on which it was actually filed.
There is no definition in the Act or rules as to what is meant by “unintentional” as stated in section 5(2C)(b) in determining whether to allow a request for permission to make a late declaration of priority under section 5(2B). In Abaco Machines (Australasia) Pty Ltd’s Application  (CH/2006/APP/0827) Lewison J held that an intention to file a PCT application was not an intention to file the “application in suit”, which the judge expanded by way of the meaning given to “application in suit” in section 5(2) of the Act and the definition of “application” provided by section 130(1) of the Act to read “an application for a patent under this Act”. In the similar case of Sirna Therapeutics Inc’s Application  RPC 12, the hearing officer held that the unintentional failure by the applicant to file the application within twelve months of the earliest priority date must however relate to the application in suit in its entirety and not merely a failure to file the subject matter of the application. As in the case of Abaco this case involved a request for late declaration of priority which was refused as the application that was unintentionally not filed was a PCT application and there was no intention to file the application in suit within the twelve-month priority period. The hearing officer observed that the requirement to show an intention to file an application in time differed from the test of “continual underlying intention to proceed” as held in Heatex Group Ltd’s Application  RPC 546 when exercising discretion under rule 110(4) of the Patents Rules 1995, which is equivalent to rule 108(3) under the Patents Rules 2007 (see 123.37), but case law under this rule may be of relevance in analysing the evidence to establish the applicant’s intentions.
Sirna Therapeutics Inc’s Application  RPC 12 and Anning’s Application (BL O/374/06) established that the “continual underlying intention” test in Heatex is not applicable in determining the meaning of the word “unintentional” (in section 5(2B) or section 20A).
In Matsushita Electric Industrial Co. v Comptroller General of Patents  EWHC 2071 (Pat), which concerned a request for restoration under s.28, Mann J gave some guidance on the level of evidential burden required to “satisfy” the Comptroller that the failure in section 28(3) was “unintentional”. The applicant in that case chose not to file any evidence beyond a bald assertion of the statutory test that the failure to pay the renewal fee on time was unintentional. It argued that that was all the statute required to satisfy the comptroller. It was held by the Judge that a mere assertion that the failure to pay the renewal fee was unintentional is not sufficient to enable the Comptroller to determine that the requirements of s.28(3) are fulfilled. He said:
the Act requires a judgment to be formed by the Comptroller so that he can be satisfied of the relevant matters. A judgment usually has to be made on the basis of evidence… The evidence required in any particular case where satisfaction is required depends on the nature of the enquiry and the nature and purpose of the decision to be made… A significant matter requires significant proof. I repeat, the Act does not require a statement that the failure to pay fees was unintentional. It requires the Comptroller to be satisfied of that fact.
It is clear from this judgment that while there is no universal rule as to what level of evidence has to be provided to satisfy the comptroller of the unintentional lapse in section 28(3), and by implication in sections 5(2B) and 20A, some evidence is required above and beyond a bald assertion that the statutory test has been met.
|Where an invention or other matter contained in the application in suit was also disclosed in two earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of his and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications shall, so far as concerns that invention or matter, be disregarded unless -
(a) it was filed in or in respect of the same country as the first; and
(b)not later than the date of filing the second, the first (whether or not so specified) was unconditionally withdrawn, or was abandoned or refused, without -
(i) having been made available to the public (whether in the United Kingdom or elsewhere);
(ii) leaving any rights outstanding; and
(iii) having served to establish a priority date in relation to another application, wherever made.
Subsection (3) derives from Article 4C(4) of the Paris Convention and deals with the situation where two (or more) earlier applications both contain the subject matter of the application in suit. The effect of the subsection is that, in most circumstances, the priority date of the subject matter in question is established by the earliest previous application containing that matter. However, the subsection goes on to provide an exception to that position, by which a second (or subsequent) earlier application can be used to establish the priority date of that matter. This exception only applies when certain specific conditions have been met regarding the earlier applications.
The specific conditions which must be met in order for the application in suit to use the second (or subsequent) earlier application as the basis for a priority claim are derived directly from Article 4C(4) Paris Convention, and are as follows:
(a) the second application was filed in or for the same country as the first application, and
(b) at the date of filing of the second application, the first application had been unconditionally withdrawn, or abandoned or refused, had not been published, and did not leave “any rights outstanding”, and
(c) at the date of filing of the second application, the first application had not been used for priority purposes for any other application.
Article 4C(4) goes on to make clear that, once these conditions have been met, the first application cannot be used subsequently as a basis for claiming priority. The effect of meeting these conditions is therefore that the first application is entirely disregarded, and the second application can legitimately be used as a basis for claiming priority and as the starting point of the 12 month priority period (see 5.18). Withdrawing the first application and filing a second application while meeting these conditions is often referred to as “regenerating the priority date”.
An applicant who files a second application and wants to use it for priority purposes must therefore ensure that the first application has not been published or used to form the basis of a priority claim. He must also ensure that, at the time of filing the second application, the first application has been withdrawn, abandoned or refused “without leaving any rights outstanding”. On an application that has been refused by a decision of the comptroller, an outstanding right may be the right to appeal that decision, or the right to request reinstatement of the application under section 20A (see 20A.02 to 20A.07). On an abandoned application (i.e. one that is treated as refused or withdrawn), the right to request reinstatement under section 20A may again be an outstanding right. On a withdrawn application, an outstanding right may be the right to request correction of an erroneous withdrawal under section 14(10) and section 117 (see 14.209 and 117.22.1).
In order to regenerate the priority date successfully, the applicant therefore needs to ensure that any such outstanding rights on the first application have explicitly been given up at or before the date of filing of the second application. For example, the applicant may make an explicit statement, on withdrawing the first application, that the withdrawal is done “without leaving any rights outstanding”. Making such a statement leaves open the possibility of filing a second application later and using it as the priority application. However, the statement would also seem to rule out the possibility of later making a request to correct the withdrawal of the first application. Another example may be where the first application has been treated as withdrawn. If the applicant wishes to regenerate the priority date, he will need to make clear (at or before filing the second application) that no rights are being left outstanding on the first application. Again, such a statement would seem to rule out the possibility of later making a request to reinstate the first application.
If the conditions for regenerating the priority date have not been met, and the application in suit is filed too late to use the first application as a basis for claiming priority (see 5.18), then the application in suit will not be able to use either the first or the second application as a basis for claiming priority of the subject matter in question. The effect is that the priority date of that subject matter, contained in both the earlier applications, is the filing date of the application in suit. If either of the earlier applications has been published then that matter will also form part of the state of the art with respect to the application in suit.
Section 5(3) is only concerned with subject matter which appears in both the first and second earlier applications. Therefore, it does not rule out the possibility that the application in suit may legitimately claim priority from both the earlier applications. For example, the two earlier applications may contain different subject matter, all of which is relevant to the application in suit. Alternatively, the two earlier applications may share matter, but the second earlier application may contain further matter relevant to the application in suit, which is not present in the first application. The fact that the second application contains matter which is also present in the first application does not affect the legitimate use of the first application to establish the priority date for this matter.
|Section 5 (4)|
|The foregoing provisions of this section shall apply for determining the priority date of an invention for which a patent has been granted as they apply for determining the priority date of an invention to which an application for that patent relates.|
The priority date of an invention in a specification is therefore determined in the same way regardless of whether the specification forms part of an application or of a granted patent.
|Section 5 (5)|
|In this section “relevant application” means any of the following applications which has a date of filing, namely -
(a) an application for a patent under this Act;
(aa) an application in or for a country (other than the United Kingdom) which is a member of the World Trade Organisation for protection in respect of an invention which, in accordance with the law of that country or a treaty or international obligation to which it is a party, is equivalent to an application for a patent under this Act;
(b) an application in or for a convention country (specified under section 90 below) for protection in respect of an invention or an application which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to an application for a patent under this Act.
s.78,89 is also relevant
Priority may be claimed only from a “relevant application”, which must be:
(a) an application for a patent under the Act, including a European or International application designating the UK,
(aa) an application for protection for an invention filed in a country which is a member of the World Trade Organisation (WTO), or
(b) an application for protection for an invention which was filed either under the laws of a convention country (see 90.02-90.03) or under the PCT or EPC (designating a country other than the UK) or some other international agreement to which a convention country is a party.
s.130(7) is also relevant
What constitutes “protection for an invention” is not specified in the Act; however s.5 is intended to have the same effect as the corresponding provisions of the EPC, and it appears likely that the term is restricted to the kinds of application referred to in Art.87(1) EPC, which allows priority to be claimed only from an application for a patent, for the registration of a utility model (e.g. German Gebrauchsmuster), for a utility certificate or for an inventor’s certificate. During pre-grant proceedings in the Office no objection should be raised to a claim to priority based on a US provisional patent application (notice in Official Journal (Patents), 31 January 1996). Such a provisional application is valid in the USA as a priority document for a subsequent patent application and expires after one year. Following a change in US law in 1999, a provisional application can be converted into a full US patent application within one year of filing. UK practice as it relates to US provisional applications would have to be reviewed if doubt were to be cast upon it in any proceedings before the courts or the comptroller. An application for a registered design is not a relevant application (Agfa-Gevaert AG’s Application,  RPC 441).
|Section 5 (6)|
Section 5(6) was added by the Patents and Trade Marks (World Trade Organisation) Regulations 1999 with effect from 29 July 1999, with the aim of enabling WTO member countries to be automatically treated as convention countries. However, an Order in Council was still needed to declare such WTO member countries as convention countries.
Section 5(5)(aa) was inserted and section 5(6) was repealed on 1 October 2014 by the Intellectual Property Act 2014, with the effect that from 1 October 2014 an application filed in or for a country which is a member of the WTO is automatically treated as a “relevant application”.