Editing Priority right (section)

== Types ==

=== Convention priority right ===

The "Paris Convention priority right", also called "Convention priority right" or "Union priority right", is a "priority right" under a multilateral arrangement, defined by Article 4 of the [[Paris Convention for the Protection of Industrial Property]] of 1883. The Convention priority right is probably the most widely known priority right. It is defined by its Article 4 A.(1):

{{cquote|Any person who has duly filed an application for a patent, or for 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 purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.<ref name ="ART4PC">[https://www.wipo.int/wipolex/en/text/288514#P83_6610 Article 4 Paris Convention]</ref>
}}

Article 4 B. of the Paris Convention describes the effects of the priority right:

{{cquote|Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third–party right or any right of personal possession.<ref name ="ART4PC"/>
}}

Article 2 paragraph 1 of the [[World Trade Organization|WTO]] [[Agreement on Trade-Related Aspects of Intellectual Property Rights]] (TRIPs Agreement) in conjunction with the Paris Convention provides a "derived" Convention priority right.<ref>[http://www.wto.org/english/docs_e/legal_e/27-trips_03_e.htm Article 27 TRIPs Agreement]</ref> That is, while WTO members need not ratify the Paris Convention, they should however comply with Articles 1 through 12, and Article 19, of the Paris Convention.{{efn|For a comparative list of the States party to the Paris Convention and the members of the WTO, see for instance [https://www.wipo.int/pct/en/paris_wto_pct.html States Party to the PCT and the Paris Convention and Members of the World Trade Organization on the WIPO web site]}}

=== Priority rights under other multilateral arrangements ===
Some priority rights are defined by a multilateral convention such as the [[European Patent Convention]] (EPC)<ref>{{EPC Article|87|1}}</ref> or the [[Patent Cooperation Treaty]] (PCT).<ref name="8PCT">{{PCT Article|8}}</ref> The Paris Convention does not cover priorities claimed <U>in</U> a European patent application or <U>in</U> an international application (or PCT application), as the EPC and the PCT have their own legal provisions regarding priority.

==== European Patent Convention ====

{{EPC Article|87|1}} defines the priority right system under the EPC or more precisely recognise priority rights for first filings in or for States party to the Paris Convention or any Member of the [[World Trade Organization]] (WTO):<ref>Under the European Patent Convention (EPC), rights of priority may be obtained from the filing of patent applications in Members of the World Trade Organization which are not party to the Paris Convention since December 13, 2007, the date of entry into force of the [[EPC 2000]], the revised version of the EPC.</ref>

{{cquote|Any person who has duly filed, in or for

(a) any State party to the Paris Convention for the Protection of Industrial Property or

(b) any Member of the World Trade Organization,

an application for a patent, a utility model or a utility certificate, or his successor 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.}}

{{EPC Article|89}} describes the effect of the priority right:

{{cquote|The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.}}

As explained by the [[Appeal procedure before the European Patent Office|Enlarged Board of Appeal of the European Patent Office (EPO)]] in its decision [[G 3/93]] of August 16, 1994 (Reasons 4):

{{cquote|Articles 87 to 89 EPC provide a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application (cf. decision J 15/80, OJ EPO 1981, 213).

The Paris Convention also contains rules of law concerning priority. The Paris Convention is not formally binding upon the EPO. However, since the EPC - according to its Preamble - constitutes a special agreement within the meaning of Article 19 of the Paris Convention, the EPC is clearly intended not to contravene the basic principles concerning priority laid down in the Paris Convention (cf. decision T 301/87, OJ EPO 1990, 335, reasons point 7.5).<ref>[http://www.epo.org/law-practice/case-law-appeals/recent/g930003ep1.html Decision G3/93 of August 16, 1994 of the Enlarged Board of Appeal of the European Patent Office]</ref>}}

Regarding the critical question "What is 'the same invention'?" in {{EPC Article|87|1}}, opinion [[G 2/98]] prescribes a photographic approach to the assessment of priority.<ref>Hans-Rainer Jaenichen, Olaf Malek, [http://216.92.57.242/patentepi/data/epi_03_2008.pdf ''The Assessment of priority cannot demand more than science can deliver or: How to apply the photographic approach in consideration of the resolving of the pictures taken'']{{dead link|date=December 2017 |bot=InternetArchiveBot |fix-attempted=yes }}, [[epi Information]] 3/2008, pp. 91-102.</ref> According to Enlarged Board of Appeal opinion G 2/98, the requirement for claiming priority of "the same invention" means that priority of a previous application in respect of a claim in a European patent application is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using [[common general knowledge]], from the previous application as a whole.<ref>European Patent Office, [http://www.epo.org/law-practice/case-law-appeals/recent/g980002ex1.html Opinion of the Enlarged Board of Appeal dated 31 May 2001, G 2/98], point 9: "It means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."</ref>

==== Patent Cooperation Treaty ====

The Patent Cooperation Treaty, in its Article 8(1), provides the possibility of claiming a right of priority for the filing of an international application (PCT application):
{{cquote|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.<ref name="8PCT"/>}}

{{PCT Rule|4|10|a}} goes on to mention that:
{{cquote|Any declaration referred to in Article 8(1) ("priority claim") may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention.<ref>{{PCT Rule|4}}</ref>}}

However, Rule 4.10(a) as amended with effect from January 1, 2000 does not apply to all designated Offices.<ref>[http://www.wipo.int/pct/en/texts/rules/r4.htm#note1 Rule 4, note 1, Patent Cooperation Treaty]</ref> For instance, for the [[European Patent Office]] as designated Office, the old Rule 4.10(a) still applied until December 12, 2007, that is, rights of priority of first applications made in a WTO member not party to the Paris Convention were not recognised. Now and more specifically for European patent applications filed on or after December 13, 2007 (the entry into force of the new version of the [[European Patent Convention]], the so-called [[EPC 2000]]), the rights of priority of first applications made in a WTO member are recognized under the European Patent Convention.<ref>{{EPC Article|87|1|b}}</ref><ref>[http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_4_epc_2000_synoptic.pdf Special edition of the Official Journal of the EPO 4/2007 - Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000 – Part I: The Articles], 2007 (PDF, 1.72 MB), page 88.</ref>

=== Internal priority rights ===
Some priority rights, called "internal priority rights", are defined by some national laws.<ref>For instance, in Canada: [[Manual of Patent Office Practice]] (MOPOP), [http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/mopop/ch07-e.pdf ''Chapter 7: Internal priority and convention priority''].</ref> Such internal priority right allows an applicant who filed a first application in a given country to claim the priority of the first application when filing a subsequent application in the same country.

The Paris Convention does not cover internal priority rights. See, e.g., [[provisional application]] in the US.

=== Priority rights under bilateral agreements ===
Some priority rights also exist on the basis of bilateral agreements.<ref>For instance, bilateral agreements with [[Taiwan]]: Government Information Office, Republic of China (Taiwan), [http://www.gio.gov.tw/taiwan-website/5-gp/Ipr/ipr01a.htm ''Taiwan's commitment to protect intellectual property rights. Cooperative Agreements Signed between Taiwan with Other Nations''] {{webarchive|url=https://web.archive.org/web/20080705093143/http://www.gio.gov.tw/taiwan-website/5-gp/Ipr/ipr01a.htm |date=2008-07-05 }}, Consulted on November 11, 2007.. Agreement No. 3 "''Mutual Recognition of Invention Patent Priority Right with [[Germany]]''", No. 5 "''Mutual Recognition of Patent Priority Right with [[Switzerland]]"'', etc... are bilateral agreements on priority rights for patents. Other bilateral agreements relate to trademarks and industrial designs.</ref> A bilateral agreement between a first and a second country may allow an applicant who filed an application in the first country to claim the priority of the first application when filing a second application in the second country. These kinds of bilateral agreements usually involve at least one country not party to the Paris Convention.