Issue 06/57 | October 24, 2006
The New UK Patent Legislation — Priority Claims

1. As a result of the coming into force of parts of the UK Patents Act 2004, several changes have been made to patent law in the United Kingdom. Of particular note is a provision which has made changes with respect to Priority Claims.

2. The purpose of the changes was to bring UK law into line with Article 13 of the Patent Law Treaty (PLT); "Correction or Addition of Priority Claim; Restoration of Priority Right".

3. There are three changes, as detailed in the following:

3.1. If it was always intended to file a UK patent application [1] claiming priority from an earlier application within the 12 month Paris Convention period, but for some reason the application was not in fact filed, it is now possible to file this UK application up until 14 months from the date of the earlier (or earliest if there is more than one) application and still validly claim the priority date.

3.1.1. This problem can be rectified by filing a request for restoration of the priority claim at the same time as the priority declaration, along with evidence showing that the failure to file the application within the Convention year was "unintentional" and with the payment of the required fee. Any indication that the applicant had a change of mind, from an original intention not to file the application or to file it without a priority declaration, is likely to be fatal to the application. Evidence of a clerical error by the applicant or his agent is likely to suffice.

3.1.2. The 14 month deadline is non-extendable.

3.1.3. The application must not have been published.

3.1.4. Note that the filing date of the application is not adjusted to be the last day of the 12 month period, because the priority claim may be a partial priority claim and this would give a false filing date for the subject matter of the application which is not covered by the (or any of the) priority document(s).

3.2. If a UK patent application is filed for which a declaration of priority was omitted, it is now possible to make the declaration of priority at any time up to a non-extendable deadline of sixteen months from the earliest priority claimed. This is possible provided that the application has not been published and that the earliest priority claim is in the twelve months prior to the filing date of the application.

3.3. An applicant is no longer required to file a translation of priority documents in all cases. Translations are now only required if the content of the priority application becomes an issue.

4. The above changes apply only to applications filed on or after 1st January 2005.

[1] Recent UK case law appears to construe the wording "an application in suit" in section 5 to mean a UK patent application filed directly with the UK Patent Office not a EP(UK) or PCT(UK) patent application, but as the Hearing Officer's decision is unclear in this respect it will have to be seen how the wording of the Act is interpreted in the future. We would expect the law to apply to all UK patent applications; by whatever route they are filed.

For more information on this topic, please contact Suzanne Oliver [suzanne.oliver@hlbbshaw.com] at HLBBshaw [www.hlbbshaw.com] in Epping, Essex, United Kingdom.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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