When is it safe to refile or update a priority application?

When is it safe to refile or update a priority application?

When is it safe to refile or update a priority application?

Prior to the Lisbon revision of the Paris Convention in 1958 there was no officially recognised mechanism for replacing a “first” application with a “subsequent” application to reset the priority period for filing a patent application. Although attempts were made by the German, Austrian and British delegations during the Paris Convention revision meeting held in London in 1934 to introduce such a provision, these attempts were unsuccessful. A revised proposal was put forward by AIPPI in 1938 to allow the priority period to be reset, and it was this proposal that eventually provided the starting point for discussions at the Lisbon revision meeting in 1958. Unfortunately the AIPPI proposal was not accepted and a considerably more restrictive provision was adopted in 1958 which now appears as Article 4C(4) of the Paris Convention.

 

Although most patent practitioners are aware that the Paris Convention provides an opportunity to reset the 12 month priority period, few appear to be aware of the detail of the provision, and the restrictions placed on its operation during the Lisbon revision meeting.

Three main restrictions when refiling or updating a priority application:

  1. The subsequent application must be filed in the same country as the first application
  2. The first application must satisfy particular requirements at the time the subsequent application is filed
  3. Once the subsequent application has been filed it is no longer possible to claim priority from the original first application

Michael Caine, a partner of Davies Collison Cave published a paper in the May 2012 Edition of the CIPA Journal which discusses the reasons for the introduction of these restrictions and their consequences by examining the language of Article 4C(4) itself, its historical development, and the ways in which different Paris Convention countries have implemented Article 4C(4).

It follows from Michael’s research that particular care must be taken when refiling or updating priority applications. Two of the consequences which follow from the restrictions when claiming priority in a strict Paris Convention country, are summarised as follows, and discussed in detail by Michael Caine in his paper:

  1. When an updated priority application is filed during the pendency of the first, for example to include further data or experimental support for the invention, it is no longer possible for the applicant to reset the priority period in respect of that invention, which period must run from the filing date of the first application. It follows that it is not possible to replace two or more priority applications with a subsequent application to reset the priority period. This consequence follows regardless of whether the subsequent application is filed in the same country or a different country from the country of filing of the first application.
  2. Where a first application is withdrawn, abandoned or refused after filing, leaving no rights outstanding except the right to claim priority in another country (see Article 4A(3)), that right to claim priority from the first application is extinguished if a subsequent application is filed in respect of that invention in the same country as the filing of the first application. This restriction has consequences for applicants who file priority applications without fees, or otherwise expressly abandon priority applications on or soon after filing. If a subsequent application is filed during the priority year, for example an application including further data or experimental support for the invention, the act of filing the subsequent application will automatically reset the priority period to 12 months from the filing date of the subsequent application (now the “first” application), and it will no longer be possible to claim priority from the original withdrawn, abandoned or refused application.

Some countries, such as Australia and the United States, have implemented provisions to avoid these consequences when making a priority claim from a refiled or updated priority application, or from an original withdrawn, abandoned or refused application which has been replaced with an updated version during the priority year.