Withdrawing patent applications: a matter of priority

"Patents Act 1977: Withdrawing patent applications with no rights outstanding" is the title of a notice posted on the UK's Intellectual Property Office website last Friday. It seeks to clarify practice on the withdrawal of patent applications and the claiming of priority. According to its substance

"... 2. The first patent application to be filed for any subject matter gives rise to a right of priority. Therefore, if a later application is filed for the same subject matter, a declaration can be made claiming priority from the earlier application. The earlier application may be pending, or may be withdrawn or terminated, at the time when the later application is filed and the priority declaration is made.

3. Section 5(3) [of the Patents Act 1977] reflects Article 4C(4) of the Paris Convention, and it enables an application filed after the first one, for the same subject matter, to give rise to a priority right - but only if certain specific conditions have been met. The specific conditions are that:

(a) the later application was filed in or for the same country as the first application, and

(b) at the date of filing of the later application, the first application had been unconditionally withdrawn, or abandoned or refused, had not been published, and did not leave "any rights outstanding", and

(c) at the date of filing of the later application, the first application had not been used for priority purposes for any other application.

4. The effect of meeting these conditions is that the later application can then give rise to a priority right, with its filing date taken as the starting point of the 12 month priority period. The first application may be entirely disregarded. This is often referred to as "regenerating the priority date", and is useful for applicants who wish to "reset the clock" in cases where the subject matter has not been disclosed at the date of filing of the later application.

Giving up "outstanding rights"

5. If an applicant wants the later application to give rise to a priority right (and so "regenerate their priority date") they must ensure that, at the date of filing the later application, the earlier application:

(a) has not been published

(b) has not already been used as the basis for a priority claim in a later application, and

(c) has been withdrawn, abandoned or refused without leaving any rights outstanding.

6. If the earlier application is simply withdrawn, there remains a right under section 14(10) and section 117 to request correction of the withdrawal if it was made in error. Similarly, if the earlier application is abandoned or refused then there may be an outstanding right to request reinstatement under section 20A, or to appeal the refusal. In either case, it remains possible to claim priority from the earlier application.

7. It follows that, in order for the later application to give rise to a priority right, the applicant must give up any outstanding rights on the earlier (withdrawn or terminated) application by the time the later application is filed.

8. This may be done by, for example, making an explicit statement when withdrawing the earlier application that the withdrawal is done "without leaving any rights outstanding". Alternatively, the statement may be made when the later application is filed. However, whenever such a statement is made, it should be noted that it rules out the possibility of later making a request to correct the withdrawal of a withdrawn application or to request reinstatement of an abandoned application.

Changes to the standard official letter acknowledging withdrawal

9. The standard letter has been updated to draw the applicant’s attention to these points, and now reads:

"Thank you for your letter dated *****.

I confirm that your patent application number GB *******.* has been withdrawn as requested. The application will be advertised as being withdrawn in the Patents Journal.

The withdrawal is effective from *****.

If your withdrawal letter states that the withdrawal was done "without leaving any rights outstanding" (or words to that effect), then you can disregard the following paragraphs.

Unless you have explicitly given them up, some rights remain outstanding in the withdrawn application (in particular, the right to request correction of the withdrawal if it was done in error). Also, if you file a later application for the same subject matter, you can still claim priority from the withdrawn application.

However, if you file a later application for the same subject matter and you want that later application itself to give rise to a priority right, then any "outstanding rights" on the withdrawn application must explicitly have been given up by the time the later application is filed. Also, the withdrawn application must not have been used as the basis for a priority claim in a later application."

The IPKat thinks that this is a helpful exercise of the "for the avoidance of doubt" variety, since applicants can easily fail to appreciate the flexible nature of priority which is based on filing rather than on first-to-invent principles.