Once a patent application has been filed, there is a general rule in patent law (Article 4 of the Paris Convention) entitling the applicant or his successor in title to file for patent protection elsewhere in the world whilst relating the two applications together. This is called ‘claiming priority’. The benefit of such a relationship is that when assessing the second application for novelty and inventive step, the Patent Office Examiner takes into account the prior art available as at the filing date of the first application, instead of the filing date of the second application. Effectively, this prevents anyone else obtaining patent protection for the same invention pursuant to an application filed anywhere in the world during the intervening period.
The time limit for filing a second and any subsequent patent applications whilst ‘claiming priority’ from a first application is 12-months from the first filing date. However, in limited circumstances, it is possible to file the second application outside of the 12-month priority period whilst retaining the right to claim priority. For example, in the UK, the requirements to be met include: the subsequent application being filed within 14 months of the first application, evidence being supplied to the UK IPO showing that failure to file within the 12-month period was “unintentional”, and official fees being paid.
The “unintentional” criteria should not be considered lightly. Further guidance on what is and is not acceptable was given by the UK IPO in BL O/182/10, a patent office decision issued in June 2010.
In brief, it was held that ignorance of the 12-month priority deadline is not a valid defence in explaining the “unintentional” failure to file. In BL O-182-10, the applicant John Terence Crilly had filed an international PCT application claiming priority from four applications, the earliest of which, P1, was filed just less than 14-months earlier. He filed the necessary paperwork, requesting the right to a restoration of priority and paid the official fees. In support of his application, Mr Crilly outlined the reasons why he had failed to meet the 12-month priority deadline.
The earliest application had been filed in the name of a different applicant (New Age Radiators), who was seemingly not entitled to the invention. As such, Mr Crilly had been in a formal dispute with the applicant over ownership of the application. The entitlement proceedings concluded after the 12-month priority period was over, granting Mr Crilly ownership. P1 was subsequently transferred into the name of Mr Crilly. It was only at this point did Mr Crilly and his patent attorneys appreciate the impact of the decision on the right to claim priority from P1. Mr Crilly quickly filed the PCT application together with a request to restore priority. His supporting statement explained that he had always intended to file an international application for the subject matter contained in P1, but had only become entitled to file the application having a valid priority claim following the outcome of the entitlement proceedings.
Mr Crilly’s patent attorneys provided further arguments and evidence. The normal diarying system for sending out reminders regarding the expiry of the priority year was not in place for P1 because, until the entitlement proceedings had been decided, P1 was not in the name of Mr Crilly and the patent attorneys in question only diary a case when they officially take over representation of an application or granted patent.
The UKIPO considered Mr Crilly’s request to restore priority but concluded that Mr Crilly’s failure to file within the 12-month priority period was not “unintentional”. This is because Mr Crilly had made a conscious decision to delay filing the PCT application pending the outcome of the entitlement proceedings and had failed to appreciate the consequences of a successful outcome of the entitlement proceedings. He would have been aware of the filing date of P1 and should therefore have been able to determine the 12-month priority period. In particular, the Hearing Office saw no evidence to suggest that Mr Crilly had any intention of filing the PCT application before the deadline. Therefore, the request for restoration of priority was refused.
If you find that you have just missed the first anniversary of your filing date but had been intending to file abroad, you should seek professional advice immediately to establish whether or not you have sufficient grounds to make a late claim to priority.
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