A copy of the previous application from which priority is claimed (priority document) must be filed before the end of the sixteenth month after the date of priority. Priority documents may be filed in paper form or electronically using OLF or Online Filing 2.0, provided the latter are in an accepted document format, have been digitally signed by the issuing authority and the signature is accepted by the EPO. Such electronic priority documents are currently being issued by the patent offices of the USA, Brazil, Portugal, Italy, Austria, France and Poland, with further offices expected to follow. Web-form filing must not be used for the electronic filing of priority documents (see the decision of the President of the EPO dated 14 May 2021, OJ EPO 2021, A42). A priority document may not be filed by fax (see the decision of the President of the EPO dated 20 February 2019, OJ EPO 2019, A18). 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 disc, provided that:
(a)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;
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.
At the request of the applicant, the EPO will include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed retrieved via the WIPO Digital Access Service (DAS). DAS supports the automatic electronic exchange of priority documents within participating patent offices. Applicants may request the office of first filing (OFF) to make certified copies of previously filed patent applications available to the DAS system and then request offices of second filing (OSF) to retrieve the copies via DAS by indicating the DAS access code(s) corresponding to the previous application(s) (see the decision of the President of the EPO dated 13 November 2021, OJ EPO 2021, A83, and the notice from the EPO dated 22 February 2019, OJ EPO 2019, A27).
If a priority document cannot be retrieved via DAS or if the applicant has not requested retrieval via DAS, the EPO will include free of charge a copy of the previous application in the file of the European patent application, if the previous application is:
(iii)a Chinese patent or utility model application
(iv)a Korean patent or utility model application, or
(v)a United States provisional or non-provisional patent application
No request is necessary to this end. In respect of If the previous application is a Chinese, Korean and or United States application, applications (items (iii) to (v) above), this only applies to European patent applications the EPO will only include a copy of the previous application free of charge if the European patent application was filed before 1 January 2022 and Euro-PCT applications or, in the case of a Euro-PCT application that has entered entering the European phase before that date, and for which if the required priority document can be included in the file of the application by 30 June 2023 (see the notice from the EPO dated 13 November 2021, OJ EPO 2021, A84). 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 document 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)), or to base correct application documents or parts on the claimed priority under Rule 56a (see A‑II, 6.4(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 applicants fail to provide a certified copy of the priority document within the above-mentioned period (Rule 53(1)), the EPO will invite them to provide it within a two month period under Rule 59. This period can be extended under Rule 132(2) (see E‑IX, 2.3.5 for Euro-PCT applications), but further processing is ruled out by Rule 135(2). If the applicant fails to provide it within this period, the priority right in question is lost (Art. 90(5)).
If a copy of the previous application cannot be included in the file, it will not be deemed duly filed under Rule 53(2). The EPO will inform applicants in good time and give them an opportunity to file the certified copy in accordance with Rule 53(1) (see the decision of the President of the EPO dated 13 November 2021, OJ EPO 2021, A83, and the notice from the EPO dated 13 November 2021, OJ EPO 2021, A84).