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Guidelines for Examination

 
 
6.7
Copy of the previous application (priority document) 

A paper copy of the previous application for which priority is claimed (priority document) must be filed before the end of the sixteenth month after the date of priority. Where multiple priorities are claimed, the above-mentioned time limit runs from the earliest date of priority.

The copy must be certified as an exact copy of the previous application by the authority which received the previous application and must also be certified by that authority as to its date of filing. This certification of the date may take the form of a separate certificate issued by that authority stating the date of filing of the previous application (Rule 53(1), second sentence) or may be an integral part of the priority document itself. The certification of the authenticity of the copy may also be a separate document or an integral part of the priority document.

It is also possible to file a copy of the previous application (priority document) on physical media other than paper, e.g. CD-R, provided that:

(i)
the physical medium containing the priority document is prepared by the authority which received the previous application, such as to guarantee that its content cannot undetectably be altered subsequently; 
(ii)
the content of the physical medium is certified by that authority as an exact copy of the previous application or the part contained therein; and 
(iii)
the filing date of the previous application is also certified by that authority. 

The certificate(s) may be filed separately in paper form. The submitted medium must be readable and free of computer viruses and other forms of malicious logic.

Rule 53(2) together with the Decision of the President of the EPO dated 9 August 201217 March 2009, OJ EPO 2012, 4922009, 236 provide for the following exceptions to the requirement that a priority document be filed:.

If the previous application is: 
(i)
a European patent application; 
(ii)
an international application filed with the EPO as receiving Office under the PCT; 
(iii)
a Chinese patent or utility model application
(iv)(iii)
a Japanese patent or utility model application; 
(v)(iv)
a Korean patent or utility model application, or 
(vi)(v)
a US patent application or provisional patent application subject to the document exchange agreement with the USPTO (see OJ EPO 2007, 473),

then the EPO will include free of charge a copy of the previous application in the file of the European patent application. No request is necessary to this end. However, as regards Chinese patent or utility model applications, this applies only if these were filed on or after 3 September 2012. Moreover, if the language of the previous application was not one of the official languages of the EPO, it may still be necessary to file the translation or declaration under Rule 53(3) (see A-III, 6.8).

Where the applicant has already supplied a copy of the priority in the context of a request to base late-filed parts of the description or drawings on the claimed priority under Rule 56 (see A-II, 5.4(v)). the applicant does not need to file it again. However, if the copy already provided was not certified as to its content and/or filing date, the applicant will need to provide the missing certification within the above time limit.

If the applicant fails to provide a certified copy of the priority document within the above-mentioned period (Rule 53(1)), the EPO will invite him to provide it within a period to be specified according to Rule 59. If the applicant fails to provide it within this period, the priority right in question is lost (Art. 90(5)). Further processing does not apply to the time limit according to Rule 59, since this is excluded according to Rule 135(2).