4.1 Formal requirements
4.1.8Claiming priority
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A revised version of this publication entered into force. |
4.1.017If you or your predecessor in title have duly filed an application for a patent, a utility model or a utility certificate in or for any state party to the Paris Convention for the Protection of Industrial Property or any member of the World Trade Organization you may claim priority when filing a European patent application in respect of the same invention. You must file the European patent application no later than twelve months after filing the first application (see points 5.10.008-5.10.010).
If the earlier application was filed in or for an EPC contracting state, you may also designate that state in the subsequent European application. The earlier application whose priority you claim may also be a European or an international (PCT) application (see point 2.4.010).
4.1.018You may claim multiple priorities in respect of one European patent application, even if they originate from different countries. You may also claim multiple priorities for any one claim. If you claim multiple priorities, time limits which run from the date of priority are computed from the earliest priority date.
Art. 88(2), (3)
GL F‑VI, 1.5
GL A‑III, 6.3
4.1.019To claim the priority of an earlier application you must indicate the date, country and file number of the earlier application.
Art. 88(1)
R. 52, 53
GL A‑III, 6.5, 6.7
GL F‑VI, 3.1-3.3
You must also file the priority document, i.e. a copy of the earlier application certified by the authority with which it was filed, together with authentication of its filing date from that authority, within 16 months of the priority date. In certain cases you are exempted from having to submit a priority document: currently the EPO includes a copy of the earlier application whose priority you claim in the file of the European patent application free of charge if the earlier application is a European patent application or an international patent application filed with the EPO as receiving Office.
It is also possible for you to request that the EPO retrieve the priority document electronically via the WIPO Digital Access Service (DAS), provided that the office where the first filing was made participates in this service. To enable you to make use of DAS, the Office of First Filling will generate a dedicated access code, which you will need to provide to the EPO together with your retrieval request. You can file the retrieval request directly in the request for grant of a European patent (EPO Form 1001; see point 4.1.013) or by filing EPO Form 1013, available on the EPO website (epo.org). In response, the EPO will automatically retrieve, free of charge, the priority document issued by the Office of First Filing. For more information please consult the WIPO website (wipo.int).
If you are filing a European patent application claiming priority from an earlier application, you have to file a copy of any search results in respect of the earlier application. Where the search results are not available when filing the European patent application, they have to be filed without delay after they have been made available to you. The obligation to file the search results for the earlier application exists as long as the application is pending before the EPO. Where the EPO notes, at the time when the examining division assumes responsibility, that the search results have still not been filed, it invites you to file them within a non-extendable time limit of two months. If you fail to file the search results or a declaration that they are not available to you, the European patent application will be deemed to be withdrawn.
You are exempted from the obligation to file a copy of the search results if the EPO drew up the search report or your priority application was filed in Austria, China, Denmark, Japan, the Republic of Korea, Spain, Sweden, Switzerland, the UK or the US. In future, further countries are expected to be included in this list.
If you do not indicate the file number or file the copy of the earlier application within the above time limit, you will be invited to remedy the deficiency; if you fail to do so, you will lose your right to priority (but see point 5.2.006).
R. 59
GL A‑III, 6.7, 6.10, 6.11
As a rule, the EPO initially examines only the formal conditions for claiming priority. The examining division (see points 5.4.001 et seq.) normally checks whether a right to priority exists if it finds prior art (see point 3.3.001) from between the priority date and the date of filing of the European patent application or if it finds a prior right under Article 54(3) (see point 3.3.003). The subject-matter for which priority is claimed must be derivable directly and unambiguously from the full disclosure of the invention in the priority document.
Where the priority document is not in English, French or German, you may be invited to file a translation of the previous application into one of the EPO's official languages. If you receive such an invitation, which may happen throughout the grant or opposition proceedings, you must file the translation within the period set by the EPO. Alternatively, if the European patent application is a complete translation of the previous application, you may submit a declaration to that effect. If you fail to supply the translation of the priority document or the declaration in due time, the right to priority with respect to the priority claim in question will be lost. However, during grant proceedings, you may file a request for further processing if you have failed to file the translation in time.