Disclaimer

Background

A priority claim can be made to an earlier filed application filed less than 12 months before the associated complete application.  Problems could arise with claims to priority if the invention described in the complete application is different to the priority application. 

Due to these problems, we recommend preparing a priority (or provisional application) to the standard of a complete application.  The greater the consistency between the complete application and the priority application: the better.  Before filing a priority application (with an important claim to priority) it is advisable to develop and test a patentable invention as much as possible.  Ideally, this should be done confidentially and without commercial use.  Grace period considerations may also apply.

As an aside, priority issues are distinct from the best method requirement. The best method requirement requires the applicant to file a description of the best system/method.

Potential Issues

A number of potential issues follow under the headings below.  Further issues could apply in various circumstances.

Only Part of the Invention

Potential Issue: The complete application comprises only a part of the invention in the priority application.

An example could be where the invention pursued in the complete application is only a component of the invention in the priority application.

Inconsistency

Potential Issue: There is an inconsistency between the invention of the complete application and the priority application.

An example could be where the invention pursued in the complete application is applicable in general where the invention of the priority application is said to be applicable only in a particular circumstance.

Realisation

Potential Issue: A new realisation has been disclosed (or is made use of) by the complete application.

An example could be where the reason for the invention working is not fully described or understood in the priority application.

For example, an elastic element may not derive priority say if the priority application disclosed only a rubber element and made no mention or realisation of the elasticity of the rubber element being important.

Combinations

Potential Issue: The priority application includes several examples but fails to describe a particular combination described or claimed in the later application.

Claims involving “and” and “or”  may provide different priorities (See EPC G 2/98 reason 6.6)(EPC G 2/98 reason 6.7).

For example, the invention could encompass an arrangement having a push element and a pull element.  The priority application may only describe an example with a push element and a different example with a pull element.

Ranges

Potential Issue: The priority application includes a range of X to Y, whereas the later application includes a different range of A to B.

An example could comprise an operating temperature of 25 to 35 degrees, whereas the priority application discloses only a room temperature operating range or a range between 25 to 40 degrees.

Sufficiency

Potential Issue: The priority application does not enable a person skilled in the art to work the invention without undue experiment.

An example could comprise a specific detail being left out of the priority application that does not allow the reader to work the invention.

Get out of Jail Free

There may be a ‘get out of jail free’ situation if the person skilled in the art could derive the subject-matter of the later invention as claimed directly and unambiguously, using common general knowledge, from the earlier application as a whole.

Different jurisdictions have different rules about how the common general knowledge can be applied to the earlier application.  Some of these rules are particularly onerous. In addition, different Examiners often have different interpretations (as may courts).

A claim to an apparatus, including “releasable fastening means”, may or may not be entitled to the priority date of a disclosure of that apparatus in which different embodiments of releasable fasteners comprise: (i) a nut and bolt; and (ii) a spring catch and a toggle-operated latch.  As an aside, in the US, the word ‘means’ could have a particularly limited meaning.  Use of the word ‘means’ must be carefully considered.

Table of Examples

A table of examples from a European reference applied under the EPC is detailed below.  We have slightly modified the table.

With regard to the table, it is to be appreciated that different views may be held in view of arguments for and against.  The question under the EPC is whether the ‘claim is directly and unambiguously derivable from the disclosure of the invention in the priority application, also taking into account any features implicit to a person skilled in the art in what is expressly mentioned in the document.’  The greater the consistency between the complete application and the priority application: the better.  Different Examiners often have different interpretations (as may courts).

(Source : http://www.iusmentis.com/patents/epc/priority/):

Claim

Basis in priority application

Benefit of priority?

A bicycle comprising the lamp of claim 1.

“This lamp can be used in vehicles such as bicycles.”

Argument For: The combination of lamp and bicycle is literally mentioned.

A bicycle comprising the lamp of claim 1, said lamp being powered by a dynamo.

“This lamp can be used in vehicles such as bicycles. Of course this requires a power source in or on the vehicle.”

Argument Against: Although lamp and bicycle are mentioned, the dynamo is not. A “power source” can mean a lot of things (e.g. a battery) and so “dynamo” cannot be derived directly from the application.

A bicycle comprising the lamp of claim 1 releasably fastened to the bicycle.

“This lamp can be installed on vehicles such as bicycles, for example using nuts and bolts to mount the lamp on the bicycle.”

Argument For: The combination of lamp and bicycle is literally mentioned. The feature of “nuts and bolts” implicitly discloses “releasably fastened”.

A bicycle comprising the lamp of claim 1, said lamp being connected to a dynamo as power source.

“This lamp can be used in vehicles such as bicycles. In bicycles the lamp could then be powered by the dynamo.”

Argument For: Bicycle, lamp and dynamo are mentioned in combination. From “be powered by the dynamo” the skilled person would immediately derive that lamp and dynamo are connected.

A vehicle comprising the lamp of claim 1.

“This lamp can be used in vehicles such as bicycles.”

Argument For: Bicycle, lamp and dynamo are mentioned in combination. From “be powered by the dynamo” the skilled person would immediately derive that lamp and dynamo are connected.

A motorcycle comprising the lamp of claim 1.

“This lamp can be used in vehicles such as bicycles.”

Argument For: Bicycle, lamp and dynamo are mentioned in combination. From “be powered by the dynamo” the skilled person would immediately derive that lamp and dynamo are connected.

A lighting arrangement comprising three lamps according to claim 1.

“A plurality of lamps can be installed in a device such as a flashlight to increase light output.”

Argument For: Bicycle, lamp and dynamo are mentioned in combination. From “be powered by the dynamo” the skilled person would immediately derive that lamp and dynamo are connected.

A lighting arrangement comprising three lamps according to claim 1.

“A plurality of lamps can be installed in a device such as a flashlight to increase light output. A preferred embodiment has the lamps in a triangular arrangement.”

Argument For: A “triangular arrangement” directly discloses three lamps.

Argument Against: While a triangular arrangement directly suggests three lamps, this does not mean that three lamps in other arrangements are also disclosed. Hence this claim may not omit this feature.

The lamp of claim 1, being coupled to an on/off-switch.

“When the lamp is powered on, …”

Argument For: The term “powered on” implies the presence of an on/off-switch.

Argument Against: “Powering on” can also be done by plugging in the power cord.

See also:

1)            http: //www.epo.org/law-practice/case-law-appeals/pdf/g980002ex1.pdf

2)            http: //www.epo.org/law-practice/case-law-appeals/pdf/g980002ep1.pdf

Right of Priority

The right of priority is usually a non-dividable right owned in ‘legal unity’.  For example, consider a scenario in which two parties jointly file a priority application.  The right to priority will likely not be able to be subsequently claimed if the two parties do not: (i) jointly file the subsequent application claiming priority; (ii) both assign the application to a successor in title who subsequently files the subsequent application claiming priority.

It is generally not possible to correct an error in claiming priority (apart from possibly refiling within any remaining  priority period).  Some very limited avenues may be available in particular circumstances.

Furthermore, the earliest priority application must generally be the first filed application in a convention country.  If there are any such earlier applications then the earlier publications must have been withdrawn without leaving any rights outstanding.  In order to exclude an earlier application, Article 4 of the Paris Convention requires :

at the time of filing the subsequent application, the said previous application [must have] 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. The previous application may not thereafter serve as a basis for claiming a right of priority.

In some countries it may be necessary to bring the earlier application to the attention of the Patent Office.  This may be a requirement, even if the earlier application has been withdrawn, abandoned or refused to the standard of Article 4 of the Paris Convention.

*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.