Of provisionals and priority: can you help?

An old, well ... oldish, friend of the IPKat, who bears relatively little resemblance to Victoria Beckham but might have made a good Minister for Intellectual Property if the circumstances had been right, has emailed him to ask the following question:
"My memory seems to believe there are some countries which will not let you claim priority from a US provisional patent application unless the US provisional application contains claims; if there are no claims, you cannot claim priority

Is my memory correct?  [That's not the question -- but this is:] What countries require claims in the provisional in order for you to claim the benefit of it?".
It seems to this Kat that this is an ideal question to put before this weblog's collectively wise and knowledgeable readership. Can you help?
Of provisionals and priority: can you help? Of provisionals and priority: can you help? Reviewed by Jeremy on Wednesday, January 09, 2013 Rating: 5


  1. I know of no country that refuses to accept US provs as priority documents. In any case Article 4A of the Paris Convention seems to settle it:

    (2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

    (3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.

  2. Art. 4(a)(2) of the Paris Union states:

    Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

    The first question which is to be answered is whether a US provisional is equivalent to a "regular national filing". My answer to that question is "yes", even without claims, since a "provisional" with a valid filing date can be "converted" to a regular utility filing before the its first anniversary. I think that this disposition exists precisely to make a "provisional" formally equivalent to a "regular" application for foreign filing purposes.

    Few applicants prevail themselves of that possibility, preferring the filing of a new application claiming the priority of the provisional. (I would believe that you gain one year of patent term that way).

    2) The second question is the effect of the absence of claims. This depends of the doctrine adopted in the country in question. There is the "whole contents approach" and the "prior claims approach".

    In EPC-land, you will look for a basis for the claims of the new application in the disclosure of the priority document taken as a whole using the (thankless) "directly and unambiguously disclosed" standard.

    I'm not too sure how the prior claims approach works (lesser legal certainty), and which countries apply it (so I can't provide the desired list). A first hint would be to determine whether the country in question implements the Patent Law Treaty, which stipulates that a filing date can be attributed to a new application even if it doesn't include claims. Such countries couldn't really expect higher requirements for foreign priority applications than in their own national ones.

    My liability for this answer shall not exceed what you paid for it...

  3. UK patent applications are often filed without claims, and I've never heard anyone suggest that they can't be used to establish a Paris Convention priority date.

    There used to be some concern as to whether US provisional applications were in fact "applications for a patent", as required by the Paris Convention, back in the days when they couldn't result in a granted patent. But that was apparently addressed by the introduction of a mechanism for converting provisional applications into non-provisionals.

    Interestingly, though, Australia doesn't have any such conversion mechanism for its provisional patent applications (they lapse automatically after 12 months). I wonder whether the numerous priority claims to such applications could, in fact, be open to challenge.

  4. It is also worth noting that the Patent Law Treaty does not require claims for an application to be assigned a date of filing (Art.5(1)(a) PLT and Rule 2 PLT). Consequently, it is not possible that a state party to the PLT would then deny a priority right based on another state not having this requirement either.

    The issue is less to do with the issue of whether claims are required for a filing date (and so whether they are required for a priority date), and more to do with the possibility of a provisional application giving rise to a later application benefiting from outstanding rights derived from the earlier provisional application, which would then invalidate the later filing as a priority (Art. 4C(4) Paris Convention). The EPO already recognised US provisional applications as priority, even before it allowed filing without claims (this became possible at the EPO with the entry into force of EPC-2000 on 13.12.2007, but US provisional applications were permitted as priorities by the EPO from 1996 onwards - OJ EPO 1996, p. 81).

  5. Wow! Are we having here an early sitting of 2013 EQE?

  6. I remember, but have no evidence, that regarding the US provisional applications, the USPTO (upon implementing the new application system) asked to WIPO whether those can be proper basis for Paris Convention priority claim. Of course, WIPO replied "yes". Even though the question and the answer did not specifically consider the issue of existence of claims, the answer was the US provisional applications can be (probably regardless of whether or not existence of claims) basis of priority claims. If a country does not accept a priority claim based on a claimless US provisional application, the country is just wrong.

  7. I don't think that the "new" US provisional aplication differs significantly from the pre-1977 Act UK provisional applications which could also only be used to establish priority of a subsequently-filed "complete" application, and there was never any doubt as to the validity of claiming priority from a UK provisional application. The only part of a UK provisional that could be carried over was the drawings, an important financial benefit in the days before photocopiers when applicants had to file a copy of the drawings on linen tracing cloth as well as paper copies on Bristolboard. In such cases the patent would refer to the "drawings accompanying the provisional specification" rather than the "accompanying drawings".

    Where I have had problems with US provisionals is the failure of US attorneys to refer the provisional in assignments, instead only giving the number of the subsequent full-blown application.

  8. My comment is not directly related to the issue of claims and provisionals, but is more to do with patent attorneys scaring themselves about what different jurisdictions will think about something. I've had several conversations over the last few years on the topic of the extent to which a priority application needs to have died before a subsequent filing will be considered a 'first filing'. Is it OK for the first priority case to be dead, but revivable, or does it also need to be unrevivable, and do different jurisdictions have different views on this? It's better not to open certain cans of worms.

  9. As correctly stated in previous comments, lacking claims should not be a problem for acknowledging priority from a US provisional application, at least not in member states of the Paris Convention. However, there was a problem with 35 U.S.C. 119(b)5)according to which the provisional application gives rise to a right of priority in a later regular application. This provoked the question whether a provisional application is an application for a patent within the meaning of Art. 4A(1) of the Paris Convention because a patent could only be granted on the ensuing regular application and not on the provisional application. The question prompted the US administration to intervene with Patent Offices like the EPO in order to have priorities from provisional applications acknowledged (see OJ EPO 1996, 61 and the proviso for the competence of the Board of Appeals). As far as I know, the matter has not been clarified by jurisprudence. The legal uncertainty gave reason to an amendment of the US Rules. 37 C.F.R. § 1.53(c)(3) allows the conversion of a provisional aopplication to a non-provisional application which has the effect that a provisional application may result in the grant of a patent without the loopway of a second application. This seems to satisfy the requirements of Art. 4A(1) of the Paris Convention.


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