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Guidelines for Examination

 
 
1.3
Validly claiming priority 

For a valid claim to priority, the following conditions must be satisfied:

(i)
the previous application must be one of those referred to in A-III, 6.2;
(ii)
the previous application whose priority is claimed must have been filed by the applicant of the European application or his predecessor in title;
(iii)
the previous application must have been filed not more than 12 months before the filing date of the European application (subject to certain exceptions, see A-III, 6.6); and
(iv)
the previous application must have been the "first application" filed in respect of the same invention as the one to which the European application relates (see F-VI, 1.4 and 1.4.1).

As concerns (i), the words "in or for" any Member State of the Paris Convention or Member of the WTO, referred to in A-III, 6.2, mean that priority may be claimed in respect of a previous national application, a previous European application, a previous application filed under another regional patent treaty or a previous PCT application. If the previous application was filed in or for an EPC Contracting State, this State may also be designated in the European application. The previous application may be for a patent or for the registration of a utility model or for a utility certificate. However, a priority right based on the deposit of an industrial design is not recognised (see J 15/80). So long as the contents of the application were sufficient to establish a filing date, it can be used to create a priority date, no matter what the outcome of the application may be; for example, it may subsequently be abandoned or refused (see A-III, 6.2).

As concerns (ii) and (iii), see A-III, 6.1 and 6.6, respectively.

As concerns (iv), the expression "the same invention" in Art. 87(1) means that the subject-matter of a claim in a European application may enjoy the priority of a previous application 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. This means that the specific combination of features present in the claim must at least implicitly be disclosed in the previous application (see F-VI, 2.2 and G 2/98).