Right to Priority – Patent Applicant has a Year to Make Decisions

Once an applicant has filed a patent application for a particular invention, he has the opportunity, within 12 months of the filing date of the application, to file a similar application and request priority for the earlier application. Priority means that when considering the novelty and inventive step of an invention, a subsequent application is considered to have been filed at the same time as the first application, in which case documents published during the priority year cannot serve as prior art publications.

Paris Convention

The right to priority is based on Article 4 of the Paris Convention. In short, the article states that an applicant from one Contracting State may use the filing date of the first application as the filing date of the second application in another Contracting State when that applicant files the second application within 12 months of the filing date of the first application.

The first and second applications may equally well be national patent or utility model applications, regional applications such as European patent applications or international PCT applications. The priority year is calculated one year from the day following the date of the first application, i.e. if the application is filed on 21 July 2021, the second application must be filed no later than 21 July 2022.

Publication of the Application

The applicant shall not lose his right to priority even if prosecution of the first application is terminated or the application is withdrawn before the application is published. It is sufficient for the right of priority that the Patent Office has given a filing date to the first application. However, it is worth remembering that even if the procecution of the first application is terminated or the application is withdrawn, before the application is published, it will become public as part of the documents of the second application upon request of priority.

Another thing to keep in mind is that an application becomes public 18 months after the priority date, i.e. if a second application claims priority from a first application, the second application becomes public 18 months after the first application is filed.

Priority may also be claimed for several previous applications, provided that no more than one year has passed since they were filed. The second application may also differ from the first application, meaning that material may be added to the application. However, priority will be given in subsequent applications only to those parts of the invention which have been disclosed in the first application.

Benefits of Priority

The biggest benefit of the right to priority is that there is no immediate need to decide in which countries to seek protection. An applicant can first file a single application, such as a national application, and see what the patent authority says about the patentability of the invention. Once the applicant has received an opinion from the patent authority on the patentability of the invention, it is easier to start applying for a patent internationally as well.

At the same time, during the priority year, the applicant can, test the market and apply for funding for his invention. These also help to decide whether it is worthwhile to start patenting an invention internationally and in which countries it is worthwhile to file patents.

Another benefit of the right to priority is that the applicant can publish his invention after the filing of a national application, without the publication becoming an obstacle to subsequent patenting.

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