Priority right
Encyclopedia
In patent
, industrial design rights
and trademark
law
s, 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 allows the claimant to file a subsequent application in another country for the same invention
, design, or trademark effective as of the date of filing the first application. 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 right of priority belongs to the applicant or his successor in title.
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 model
s. 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 claim
ed 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.
of 1883. The Convention priority right is probably the most widely known priority right. It is defined by its Article 4 A.(1):
Article 4 B. of the Paris Convention describes the effects of the priority right:
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. 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] on the WIPO web site).
(EPC) or the Patent Cooperation Treaty
(PCT). The Paris Convention does not cover priorities claimed in a European patent application or in an international application (or PCT application), as the EPC and the PCT have their own legal provisions regarding priority.
(WTO):
describes the effect of the priority right:
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):
Regarding the critical question "What is „the same invention“?" in , opinion G 2/98 prescribes a photographic approach to the assessment of priority. According to the headnote of opinion G 2/98, the requirement for claiming priority of "the same invention" means that priority of a previous application in respect of a claim in a European patent application is to be acknowledged only if 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.
goes on to mention that:
However, Rule 4.10(a) as amended with effect from January 1, 2000 does not apply to all designated Offices. For instance, for the European Patent Office
as designated Office, the old Rule 4.10(a) still applied until December 12, 2007, that is, rights of priority of first applications made in a WTO member not party to the Paris Convention were not recognised. Now and more specifically for European patent applications filed on or after December 13, 2007 (the entry into force of the new version of the European Patent Convention
, the so-called EPC 2000
), the rights of priority of first applications made in a WTO member are recognized under the European Patent Convention.
in the US.
Let us imagine the following scenario. Ms. A has invented an improved mousetrap
and decides to apply for a patent on her mousetrap. She first files a German
patent application on July 15, 2006. Starting from July 16, 2006, Ms. A has then one year to file patent applications in other countries to be able to benefit from the date of filing of the German patent application in these other countries. If Ms. A files on July 15, 2007 a patent application in the United Kingdom
(UK) for her mousetrap, and if, upon filing the patent application in the United Kingdom, Ms. A claims the priority of the earliest German patent application filed one year before, the date for examining the novelty and inventive step requirements in the United Kingdom will be July 15, 2006, not July 15, 2007.
This means that any disclosure to the public of the improved mousetrap on or after July 15, 2006 (by Ms. A or anyone else) will not prejudice Ms. A's patent application in the United Kingdom. If Mr. B independently invents around January 2007 the same improved mousetrap and decides to directly publish in February 2007 a paper explaining how his new mousetrap works, the publication of the paper by Mr. B will not affect the novelty of Ms. A's patent application in the United Kingdom, even though the publication of Mr. B's paper takes place before the actual date of filing of Ms. A's UK patent application.
The priority system, including this one-year priority right, enables Ms. A to file a patent application as soon as possible in one country (in this case in Germany, and in the German language
), and gives her one year to do whatever is necessary to file patent applications in other countries (translating the text of the application, filling the application forms, sending the translated application and forms to the foreign patent offices, collecting the funds to pay the filing fees, and so on) without being affected by any intervening publication. The actual date of filing in the United Kingdom remains July 15, 2007, and this is the date from which the 20-year duration of any ensuing patent is calculated. The example also applies to many other countries, such as to all countries which are party to the Paris Convention.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, industrial design rights
Industrial design rights
An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three...
and trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
s, a priority right or right of priority is a time-limited right
Right
Rights are legal, social, or ethical principles of freedom or entitlement; that is, rights are the fundamental normative rules about what is allowed of people or owed to people, according to some legal system, social convention, or ethical theory...
, triggered by the first filing of an application for a patent, an industrial design
Industrial design rights
An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three...
or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
, design, or trademark effective as of the date of filing the first application. 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 right of priority belongs to the applicant or his successor in title.
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 model
Utility model
A utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...
s. 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
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
and inventive step or non-obviousness
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
for the subsequent application claiming the priority of the first application. In other words, the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
which is taken into account for examining the novelty and inventive step or non-obviousness of the invention claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed 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.
Rationale
The "basic purpose [of the right of priority] is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law."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 PropertyParis Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union 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.
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.
Article 2 paragraph 1 of the WTO
World Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
Agreement on Trade-Related Aspects of Intellectual Property Rights
Agreement on Trade-Related Aspects of Intellectual Property Rights
The Agreement on Trade Related Aspects of Intellectual Property Rights is an international agreement administered by the World Trade Organization that sets down minimum standards for many forms of intellectual property regulation as applied to nationals of other WTO Members...
(TRIPs Agreement) in conjunction with the Paris Convention provides a "derived" Convention priority right. 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] 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 ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) or the Patent Cooperation Treaty
Patent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
(PCT). The Paris Convention does not cover priorities claimed in a European patent application or in an international application (or PCT application), as the EPC and the PCT have their own legal provisions regarding priority.
European Patent Convention
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 or any Member of the World Trade OrganizationWorld Trade Organization
The World Trade Organization is an organization that intends to supervise and liberalize international trade. The organization officially commenced on January 1, 1995 under the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade , which commenced in 1948...
(WTO):
- Any person who has duly filed, in or for
-
- (a) any State party to the Paris Convention for the Protection of Industrial Property or
-
- (b) any Member of the World Trade Organization,
- an application for a patent, a utility model or a utility certificate, or his successor 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.
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.
As explained by the Enlarged Board of Appeal of the European Patent Office (EPO)
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
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).
Regarding the critical question "What is „the same invention“?" in , opinion G 2/98 prescribes a photographic approach to the assessment of priority. According to the headnote of opinion G 2/98, the requirement for claiming priority of "the same invention" means that priority of a previous application in respect of a claim in a European patent application is to be acknowledged only if 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.
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.
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.
However, Rule 4.10(a) as amended with effect from January 1, 2000 does not apply to all designated Offices. For instance, for the European Patent Office
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
as designated Office, the old Rule 4.10(a) still applied until December 12, 2007, that is, rights of priority of first applications made in a WTO member not party to the Paris Convention were not recognised. Now and more specifically for European patent applications filed on or after December 13, 2007 (the entry into force of the new version of the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
, the so-called EPC 2000
EPC 2000
The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation...
), the rights of priority of first applications made in a WTO member are recognized under the European Patent Convention.
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 applicationProvisional application
Under United States patent law, a provisional application for patent is a legal document filed in the United States Patent and Trademark Office , that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one...
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 country 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 country. These kinds of bilateral agreements usually involve at least one country not party to the Paris Convention.Example
An example may help to understand the legal concept of priority right. The example presented here illustrates the case of the priority right in patent law, but the example could be extended to trademarks, taking into account the difference of priority period (12 months for patents, 6 months for trademarks).Mousetrap
A mousetrap is a specialized type of animal trap designed primarily to catch mice; however, it may also trap other small animals. Mousetraps are usually set in an indoor location where there is a suspected infestation of rodents. There are various types of mousetrap, each with its own advantages...
and decides to apply for a patent on her mousetrap. She first files a German
Germany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
patent application on July 15, 2006. Starting from July 16, 2006, Ms. A has then one year to file patent applications in other countries to be able to benefit from the date of filing of the German patent application in these other countries. If Ms. A files on July 15, 2007 a patent application in the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
(UK) for her mousetrap, and if, upon filing the patent application in the United Kingdom, Ms. A claims the priority of the earliest German patent application filed one year before, the date for examining the novelty and inventive step requirements in the United Kingdom will be July 15, 2006, not July 15, 2007.
This means that any disclosure to the public of the improved mousetrap on or after July 15, 2006 (by Ms. A or anyone else) will not prejudice Ms. A's patent application in the United Kingdom. If Mr. B independently invents around January 2007 the same improved mousetrap and decides to directly publish in February 2007 a paper explaining how his new mousetrap works, the publication of the paper by Mr. B will not affect the novelty of Ms. A's patent application in the United Kingdom, even though the publication of Mr. B's paper takes place before the actual date of filing of Ms. A's UK patent application.
The priority system, including this one-year priority right, enables Ms. A to file a patent application as soon as possible in one country (in this case in Germany, and in the German language
German language
German is a West Germanic language, related to and classified alongside English and Dutch. With an estimated 90 – 98 million native speakers, German is one of the world's major languages and is the most widely-spoken first language in the European Union....
), and gives her one year to do whatever is necessary to file patent applications in other countries (translating the text of the application, filling the application forms, sending the translated application and forms to the foreign patent offices, collecting the funds to pay the filing fees, and so on) without being affected by any intervening publication. The actual date of filing in the United Kingdom remains July 15, 2007, and this is the date from which the 20-year duration of any ensuing patent is calculated. The example also applies to many other countries, such as to all countries which are party to the Paris Convention.
See also
- Filing date
- Inventive step and non-obviousnessInventive step and non-obviousnessThe inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
- NoveltyNovelty (patent)Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
- Prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...