Speaking of “priority right”, patent applicants must be very familiar with this term. Every applicant would concern whether they could enjoy the right of priority, and every patent agency would remind their clients to be mindful about whether there is any priority they should claim before filing a new patent application.
Do you truly understand the concept of “priority right”? Here we will have a detailed introduction to priority right, in hope that you will have better understanding on this important system.
Origin of the patent-priority system
The patent-priority system was first established in the Paris Convention for the Protection of Industrial Property of 1883, aiming to help an applicant file a subsequent application in another contracting state after filing a first application in his own state. More specifically, the priority right means that after an applicant first files a patent application in one contracting state, he could, within a limited period, file a subsequent application to seek protection for the same subject matter in another contracting state, and the subsequent application, in some respects, is considered as filed on the date of filing the first application. Any disclosure or application made between the period from the filing date of the first application to the date of filing the subsequent application will not affect the novelty or inventive step of the subsequent application. That is to say, the applicant’s subsequent application enjoys a priority (i.e. the commonly-called foreign priority) compared with others when filing the same subject once the applicant filed an application first and he gains an advantage in the following filing and examination procedures If the subsequent application could claim and enjoy the priority. This system provides protection for the rights of both inventors and applicants.
With the development of patent system, the preferential treatment provided by the priority system is no longer limited to foreign applicants, but is also extended to domestic applicants. That is to say, after first filing an application in his own country, if within a limited period, he files a subsequent application for the same subject matter in his country, he can also enjoy the priority of the first application (i.e. the commonly-called domestic priority).
It should be noted that the priority period is different for different types of applications, i.e., 12 months for patents and utility models and 6 months for industrial designs, starting from the date of filing the first application. The applicant can no longer enjoy this right beyond the prescribed period, even if the application meets the "substantive" requirement of claiming priority. It is a restriction on the right holder for the purpose of fairness and justice.
For a prior application to be qualified as a priority, being filed earlier is insufficient, it also should be the first application, otherwise, it cannot serve as a basis for claiming a priority. This is to prevent the applicant from using the priority system to indefinitely defer the filing date. The first application means that no same application had been filed prior to it and that it has not claimed any priority. However, the so-called first application is also not absolute, and in accordance with Article 4(4) of the Paris Convention, “A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority.”.
As far as foreign priority is concerned, the prior application which serve as the basis for claiming a priority and the subsequent application which claims a priority are independent of each other. According to provisions in the Paris Convention, the withdrawal, abandonment or rejection of the "prior application" does not affect the application’s ability of serving as the basis for claiming a priority.
The basic concept of priority has been introduced above. It can be seen that the purpose of patent priority is to give the same applicant a security period for filing a patent application on the same subject in different countries, excluding the possibility for plagiarists to file a preemptive application and obtain a patent.
So what kind of procedures do you need to go through to claim a priority?
According to the provisions of China's Patent Law and Implementing Regulations of The Patent Law, foreign priority means that where, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, the applicant files in China an application for a patent for the same subject matter, the applicant may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.
To enjoy a foreign priority, the applicant needs to be mindful about the following details:
First, a declaration of priority shall be submitted.
Any applicant who claims the right of foreign priority shall make a written declaration when an application is filed, and if the applicant fails to make the written declaration, the claim to the right of priority would be deemed not to have been made. Submitting the declaration of priority is the first step for claiming a priority, and if this declaration fails to be submitted at the time of filing, it can no longer be filed later. Thus, it is very important not to neglect this.
The so-called declaration is to fill in the information of the prior application in the corresponding column of the application form of the subsequent application, including: the filing date and application number of the prior application, the name of the authority with which the prior application was filed; If in the declaration, one or two of these three items are missing or incorrect, the applicant shall make rectification within a prescribed time limit, otherwise, the right of priority will be deemed not to have been claimed. Therefore, applicants shall pay attention to this step.
Secondly, a copy of the prior application documents shall be submitted.
Where an applicant claims the right of foreign priority, the applicant shall submit a copy of the prior application documents. This copy shall be certified by the authority with which the prior application was filed. The formality of the copy of the prior application document shall comply with the international practice. At least, the name of the country or governmental organization with which the prior application was filed, the name of the applicant, the filing date and the application number shall be indicated. It should be noted that the copy of the prior application documents shall be submitted within three months from the date of filing the subsequent application. In comparison to the time that authorities issue and deliver documents, this time period is relatively sufficient.
In order to expedite the examination process and improve the examination efficiency, a copy of the relevant certified documents may be prepared in advance and submitted together at the time of filing the subsequent application if the applicant intends to claim the priority of a prior application. Of course, for the convenience of applicants from various countries, the copies of certified priority documents can be submitted in several ways, including DAS transmission, direct transmission, authorized transmission and so on, to reduce the pressure on applicants.
Thirdly, the applicant of the subsequent application shall be the same as the applicant of the prior application.
The applicant of the subsequent application which claims the right of priority shall be the same as the one recorded in the copy of the prior application. If not the same, a document certifying the assignment of the right of priority, signed or sealed by all of the applicants of the prior application, shall be submitted at the time of or at the latest within three months from the date of filing the subsequent application. Where the prior application has several applicants and the subsequent application has several different applicants, a document certifying the assignment of the priority right, signed or sealed by all of the applicants of the prior application, to all of the applicants of the subsequent application may be submitted; or a document certifying the assignment of the priority right, signed or sealed respectively by all of the applicants of the prior application, to the applicants of the subsequent application shall be submitted. The document certifying the assignment of the priority right shall be signed before the filing of the subsequent application, unless otherwise stipulated in such document.
If the applicants of the subsequent application are included in the applicants of the prior application, there is no need to provide a document certifying the assignment of the right of priority. Meantime, the right of claiming a priority can be assigned independently of other civil rights.
Furthermore, fees for claiming priority shall be paid.
Where an applicant claims priority, the applicant shall pay the fee for claiming priority at the same time with the payment of the filing fee. If the fee is not paid or not paid in full within the time limit, the claim for priority shall be deemed not to have been made. Where the claim for priority has been withdrawn, the fee paid for claiming priority will not be refunded.
The above four steps are key formality requirements for claiming a priority. Thus, the applicant must submit all documents in a timely manner so as to enjoy the right of priority.
Then, if do not want to submit the priority documents and want to abandon the priority claim, what should we do?
The applicant may withdraw his claim to the right of priority after claiming the priority. Where multiple priorities are claimed, the applicant may withdraw his claim to one or some or all of the rights of priority. Where any applicant withdraws his claim to the right of priority, he shall submit a written declaration of withdrawal of the right of priority.
The above is an introduction to foreign priority. In contrast to foreign priority, domestic priority is relatively simpler.
Domestic priority means that where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, the applicant files with the patent administration department under the State Council an application for a patent for the same subject matter, the applicant may enjoy a right of priority.
With regard to copy of priority documents, since the prior application was also filed with the China National Intellectual Property Authority (CNIPA), where a domestic priority is claimed, the applicant does not need to submit a copy of priority document. As long as the filing date and application number are indicated in the application form, a copy of priority document may be deemed to have been submitted.
In addition, the same as the requirement of foreign priority, domestic priority also requires that the prior application shall be the first application. Therefore, if the prior application has already claimed a foreign or domestic priority, or is a divisional application filed as prescribed, the prior application shall not serve as the basis for claiming priority.
Further, where a domestic priority is claimed, since the prior application and the subsequent application are both filed with the CNIPA, and both applications are for the same subject matter, the issue of double patenting may be raised. To avoid double patenting, it is prescribed in the Implementing Regulations of The Patent Law that, where the prior application has been granted, it cannot serve as the basis for claiming domestic priority, and where the domestic priority is claimed, the prior application shall be deemed to be withdrawn from the date on which the subsequent application is filed.
An applicant may claim one or more priorities for a patent application; where multiple priorities are claimed, the priority period for the application shall be calculated from the earliest priority date.
Regarding patent priority, we should also be aware of the details below:
(1) There is strict time limit for claiming the right of priority. Only the right of priority is claimed with the prescribed priority period, can the applicant enjoy the right of priority.
(2) The right of priority is not established automatically. The applicant must submit a declaration of claiming priority at the time of filing the subsequent application and submit all corresponding effective evidence documents, and only after these documents are considered qualified upon examination, will the right of priority be established.
(3) The subsequent application which claims a priority shall have the same subject matter as the prior application. The term “same” means that all the contents of the claims of the subsequent application can be found in the whole text of the prior application. Therefore, the description of the subsequent application may be improved on the basis of that of the prior application.
The starting point for calculation of priority period, i.e. the determination on the scope of prior arts, plays a very important role for a patent application. Hope the above basic knowledge about priority right may be of help for you to understand China’s priority system for patent applications.
The Chinese version of the article has been published on AFD China’s official WeChat account. https://mp.weixin.qq.com/s/7ALlwSGmvBZIXas49v18UQ