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Priority Dates

Written by Michael Coyle on 19 December 2010

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The right to priority

The right to priority is governed by section 5 of the Patents Act 1977, which is one of the provisions declared by section 130(7) to be "so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention and the Patent Co-Operation Treaty". The corresponding provision of the EPC is Article 87 and the corresponding provision of the PCT is Article 8.

Prior to its amendment by the European Patent Convention 2000, paragraph 1 of Article 87 of the EPC provided:

"Any person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent or the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors 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."

Article 8 of the PCT provides:

"(1) 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 .

(2)(a) Subject to the provisions of sub-paragraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.

(b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that state."

Article 87(1) of the EPC and Article 8 of the PCT both give effect to Article 4(A)(1) of the Paris Convention, which provides:

"Any person who has duly filed an application for a patent, or 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 purposes of filing in the other countries, a right of priority during the periods hereinafter fixed."

In Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat) </ew/cases/EWHC/Patents/2009/1304.html>, [2009] FSR 27 </cgi-bin/redirect.cgi?path=/ew/cases/EWHC/Patents/2009/1304.html> Kitchin J considered these provisions and concluded at [93]-[95]:

"93. So art.4 specifies a person is to enjoy a right of priority if he has filed a relevant application for a patent or if he is the successor in title to such a person. Successor in title here must mean successor in title to the invention, as the parties before me agreed. Further, any person wishing to take advantage of the priority of such a filing must be required to make an appropriate declaration.

94. Both elements of art.4 are reflected in s.5 of the Act which requires a declaration made by the applicant which complies with the relevant rules and specifies one or more earlier relevant applications made by the applicant or a predecessor in title.

95. In my judgment, the effect of art.4 of the Paris Convention and s.5 of the Act is clear. A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of art.87 EPC in two cases: J19/87 and T62/05."

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