Quick Navigation

 

Guidelines for Examination

 
 

2.3.5 Claim to priority

The claim to priority (see A‑III, 6 ("Claim to priority")) for an international application refers to the date, or dates, claimed under the PCT. Normally, the copy of the previous application, referred to in A‑III, 6.7, i.e. the priority document, is furnished to the EPO as designated Office by the International Bureau and not by the applicant. In accordance with Rule 17.2 PCT, the International Bureau will be requested by the EPO to furnish it with a copy as standard practice promptly, but not earlier than international publication, or, where the applicant has requested early examination (in accordance with Art. 23(2) PCT), not earlier than the date of the request. Where the applicant has complied with Rule 17.1(a) and (b) PCT, the EPO may not ask the applicant himself to furnish a copy.

Where the file number or the copy of the previous application has not yet been submitted at the expiry of the 31-month time limit, the EPO invites the applicant to furnish the number or the copy within a specified period. However, Rule 53(2) and the Decision of the President of the EPO dated 9 August 2012, OJ EPO 2012, 492, providing an exception to the requirement that a copy of the previous application be furnished (see A‑III, 6.7), also apply to international applications entering the European phase. Furthermore, as just mentioned, where the applicant has complied with Rule 17.1(a) or (b) PCT the EPO as a designated Office may not ask the applicant himself to furnish it with a copy of the priority document (Rule 17.2(a) PCT, second sentence).

If the priority document is not on file, substantive examination may nevertheless be started, provided that neither intermediate documents (published in the priority period) nor Art. 54(3) documents exist which cause the patentability of the subject-matter claimed to depend on the validity of the priority right. However, no European patent may be granted until such time as the priority document is on file. In such a case, the applicant is informed that the decision to grant will not be taken as long as the priority document is missing. In such cases, however, the application may be refused without the priority document being on file, provided that the relevant prior art is neither an intermediate document nor an Art. 54(3) document, the relevance of which depends on the validity of the priority right. For more details on treatment of such cases in examination see F‑VI, 3.4.

Where a translation of the previous application into one of the official languages of the EPO is required, it must be filed on request from the EPO in accordance with Rule 53(3) (see A‑III, 6.8 and sub-sections and 6.10).

The provisions for restoration of priority right (see A‑III, 6.6) exist also under the PCT (Rules 26bis.3 and 49ter PCT). Under the PCT, restoration of right of priority can be made either in the international phase before the receiving Office (Rule 26bis.3 PCT) or upon entry into the European phase before the EPO (Rule 49ter.2(b)(i) PCT).

It should be noted that the EPO as both receiving Office and designated/elected Office applies the "due care" criterion in accordance with its practice under Art. 122 (Rules 26bis.3(a)(i) and 49ter.2(a)(i) PCT). As a consequence, any request for restoration of priority rights granted by a receiving Office under the "unintentional" criterion is not valid in the procedure before the EPO as designated/elected Office (Rule 49ter.1(b) PCT).