MOPOP - Chapter 7



Requests for Priority

Table of Contents

7.01
Scope of this chapter - May 2014

This chapter addresses the requirements for requesting priority from an application previously filed in Canada or in any country belonging to the Paris Convention for the Protection of Industrial Property ("the Paris Convention") or in any World Trade Organization (WTO) member country and the mechanisms for withdrawing priority from an application.

7.02
Priority - May 2014

Article 4 of the Paris Convention provides for the right of priority for patent applications filed in any country of the Union established by Article 1, section 1 of the Paris Convention. Article 2(1) of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights {TRIPS Agreement} provides that Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).

Claiming priority allows an applicant to benefit from a claim date that is earlier than the actual date of filing of the application. An applicant is required to file a request for priority to gain the earlier claim date. Priority is based on subject-matter disclosed in a priority document and is not restricted to what is claimed in the priority documenti. A principal advantage provided by the right of priority is to give applicants time to decide whether they want to seek protection in one or more countries for an invention based on the filing of an earlier application (i.e. a priority document) in a country affording priority rights. This enables an applicant to disclose or publicly practice the later claimed invention between the filing of the priority document and the subsequent application. The effects of a request for priority are discussed in the context of the patentability of a claim in chapter 15 of this manual.

7.03
Requesting priority - May 2014

The requirements for requesting priority in respect of an application for patent regularly filedii in Canada are set out in section 28.4 of the Patent Act.
Section 28.4 of the Patent Act provides that

(1) For the purposes of sections 28.1, 28.2 and 78.3, an applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly filed applications.

(2) The request for priority must be made in accordance with the regulations and the applicant must inform the Commissioner of the filing date, country or office of filing and number of each previously regularly filed application on which the request is based.

7.03.01
Right to priority

The right of an applicant to establish priority rights from an earlier application requires the application to meet the requirements of paragraph 28.1(1)(a) of the Patent Act and file a timely request in accordance with paragraphs (b) and (c).

Subsection 28.1(1) of the Patent Act provides that

The date of a claim in an application for a patent in Canada (the "pending application") is the filing date of the application, unless

(a) the pending application is filed by

(i) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or

(ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim;

(b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and

(c) the applicant has made a request for priority on the basis of the previously regularly filed application.

An applicant may only file a request for priority based on a prior application that has also been filed by the applicant named on the pending application unless the person who filed the prior application has transferred priority to the requesting applicant (see section 7.03.02). That is, an applicant may not request priority based on an earlier application or applications filed by a different applicant unless the applicant named on the pending application is successor in title of the earlier application on the date the request is made under the provisions of Article 4 A(1) of the Paris Conventioniii.

The prior application must have been filed in Canada or in any country belonging to the Paris Convention or in any World Trade Organization (WTO) member country to be afforded priority rights.

The applicant need not be a national of a Contracting Party of the Paris Convention but must either reside in, or have "real and effective industrial or commercial establishments in the territory of one of the countries of the Union".iv

7.03.02
Transfer of ownership

In situations where the rights conferred by a Canadian application or patent forming the basis of a request for priority for a later application have been transferred to a later applicant, the Office must have received a notice of transfer from the earlier applicant in accordance with section 38 of the Patent Rules which provides that

No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered in the Patent Office in respect of that patent or application.

Where the priority document is filed in a foreign jurisdiction and the applicant named on the priority document is different than the applicant for the Canadian application, the applicant in Canada must furnish the Office with evidence that priority rights have been transferred.

See chapter 6 of this manual for information on the requirements for transfer of rights.

7.03.03
Restoration of the right of priority is not available in Canada

"Restoration of the right of priority" is a mechanism used by the World Intellectual Property Office ("WIPO") and numerous countries whereby the time limit for filing an application accompanied by a request for priority is extended beyond the normal 12-month period after the filing of a priority document. This practice is limited to situations where the applicant failed to file a request for priority despite "due care" and where the failure to request was "unintentional" on the part of the applicant.

When acting as a Receiving Office for international applications, CIPO will accept a request by the applicant to restore the right of priority for an international application if it is satisfied that the criteria are met. This restoration may then be effective in designated Offices whose applicable national laws provide for restoration of the right of priority. As a designated Office, however, CIPO does not recognise requests for restoration priority.

In accordance with Rule 49ter.2 (h) of the PCT Regulations, the Office has informed the International Bureau that the restoration of priority rights is incompatible with the Canadian Patent Act and Rules. Consequently, the Office does not recognise extensions granted at the international phase for applications entering the national phase in Canadav. As the Patent Act and Rules do not contain provisions for restoring priority rights, regularly filed national applications are not subject to priority restoration.

7.03.04
Divisional applications and priority of parent application

The filing date of a divisional application filed in accordance with subsection 36(2) of the Patent Act is governed by subsection 36(4) of the Patent Act which provides, in part, that

A divisional application [...] shall have the same filing date as the original application.

The Office automatically transfers any priority claim associated with the original application unless the applicant specifically requests that priority not be transferred by making an indication to this effect in section 4 of the Petition for Grant of a Patent (”the petition”).

If an application is not entitled to divisional status, priority will not be considered as applicable to the pending application for examination purposes.  The claim date of such an application will be the same as the resulting filing date, i.e., the date the documents were received by the Office, unless a valid request for priority is filed in accordance with the Patent Act and Rules as detailed in this chapter.

More information on divisional applications and priority can be found in MOPOP sections 14.10 and 14.13.

7.04
Rules governing requests for priority - May 2014

The requirements for establishing priority for applications filed on or after October 1, 1996 are set forth in subsection 88(1) of the Patent Rules and address single or multiple priority claims, treatment of priority documents filed before multinational authorities or through international treaties, and restrictions on time limits for requesting priority.

7.04.01
Requirements for making a request for priority

Paragraph 88(1)(a) of the Patent Rules provides that an applicant has the option of making a request for priority in the petition at the filing date or in a separate request. When a request for priority is not made in the Petition or where it is made on a date later than the filing date, the request must be made in accordance with paragraph 88(1)(b) or (c) of the Patent Rules. Failure to request priority in a timely manner will result in the claim date being the filing date conferred by section 28.1 of the Patent Act.

An applicant may not rely on any statement in the application – other than in the petition – which claims priority from an earlier applicationvi. For example, a statement in the introductory portion of the description claiming a benefit or priority from a United States application is not considered a valid request for priority even where the serial number and filing date have been provided; the same information must appear in the Petition or in a separate document to comply with subsection 88(1) of the Patent Rules.

7.04.01a
Single priority document

Paragraph 88(1)(b) of the Patent Rules is applicable when the request for priority is based on a single document and provides that

where a request for priority is based on one previously regularly filed application, the request must be made, and the applicant must inform the Commissioner of the filing date, country of filing and application number of the previously regularly filed application, before the expiry of the sixteen-month period after the date of the filing of that application[.]

Together, the filing date, country of filing and application number represent all of the information necessary for a successful request for priority from a single priority document and must be received by the Office no later than 16 months after the filing date of the priority document.

7.04.01b
Multiple priority documents

Where multiple documents are relied on for a priority request, paragraph 88(1)(c) of the Patent Rules applies and provides that

where a request for priority is based on two or more previously regularly filed applications,

(i) the request must be made, and the applicant must inform the Commissioner of the filing date and country of filing of each previously regularly filed application on which the request for priority is based, before the expiry of the sixteen-month period after the earliest date of filing of those applications, and

(ii) the applicant must, for each previously regularly filed application on which the request for priority is based, inform the Commissioner of its application number before the expiry of the twelve-month period after its date of filing or before the expiry of the period referred to in subparagraph (i), whichever is later.

An applicant must provide the Office with the filing date and country of filing for each previously filed application from which priority is requested no later than 16 months after the filing date of the earliest previously filed application. For each previously filed application from which priority is requested, the applicant must furnish the Office with the application number no later than 12 months from the filing date of the corresponding previously filed application unless the 12-month limit occurs prior to 16 months after the filing date of the earliest previously filed application. In this case, the applicant would have until the expiry of the 16-month period to supply the Office with the application numbers for all priority documents.

Where a PCT application has benefited from restoration of priority rights at the international stage, the application will not receive the benefit of priority at the national stage and the applicant may forfeit certain rights for the application regardless of whether, in the case of multiple priority documents, other priority documents meet the normal criteria.

Example 1:

A regularly filed national application ('the pending application') is submitted to the Office on March 2, 2009. In the Petition, the applicant requests priority from a US application filed on March 3, 2008 and from a Canadian application filed on May 1, 2008. In item 4 of the Petition, the applicant provides the application number, the country of filing and filing date of the previously filed applications and requests priority from these prior applications.

Analysis:

The applicant is entitled to priority from both previously filed applications. The claim date of each claim in the pending application corresponds with the filing date of the previously filed application which first discloses the claimed subject-matter, i.e., either March 3, 2008 or May 1, 2008. The claim date for any subject-matter claimed in the application which is not found in either priority document is March 2, 2009.

Example 2:

A regularly filed national application is submitted to the Office on March 2, 2009. The applicant does not file a request for priority at filing but on July 15, 2009 files a request claiming priority from a US application filed on March 3, 2008 and from a Canadian application filed on August 1, 2008. The applicant provides the application number, country and filing date of the previously filed applications and requests priority from these prior applications.

Analysis:

The applicant is entitled to priority from the prior Canadian application filed on August 1, 2008, but not from the US application filed on March 3, 2008. The request for priority was filed later than 16 months after the filing date of the earlier US application and the request therefore does not comply with subparagraph 88(1)(c)(ii) of the Patent Rules in respect thereof. The applicant will receive priority based on the prior Canadian application.

7.04.02
Applications filed before an intergovernmental authority

Several intergovernmental organisations exist to centralize the patent search and examination process for a number of member countries. An applicant may request priority in Canada based on a previously filed application submitted to the intergovernmental organisation.

Subsection 88(3) of the Patent Rules provides that:

For the purposes of subsection (1), if the previously regularly filed application is for a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one country, the applicant may provide the Commissioner with the name of the authority with which the application was filed instead of the country of filing.

For example, an applicant seeking priority from an application filed at the African Regional Intellectual Property Organization (ARIPO) may identify the priority document by naming ARIPO as the authorityvii and provide the filing date and application number issued by ARIPO.

7.04.03
Applications filed before an international organisation

International applications are filed before an international organisation which examines the application but does not issue a patent effective in any member state without further actions by the applicant to secure patent rights in elected states. These applications may form the basis of priority for applications filed in Canada.

7.04.03a
Applications filed before the PCT

The filing of a PCT application has the effect of filing a regular national applicationviii in each state designated in the international application. The Canadian filing date of the national phase application is the same as the filing date for the corresponding PCT application. In accordance with the Paris Convention, the effect of an international application is equivalent to that of a national filing. Priority rights, for example, may be based on an international application.

Subsection 88(4) of the Patent Rules provides that:

For the purposes of subsection (1), if the previously regularly filed application is an international application, the applicant may provide the Commissioner with the name of the receiving Office with which the application was filed instead of the country of filing.

For example, an international application may be filed directly with the International Bureau of WIPO. Such an application will be assigned an application number bearing the two-letter code 'IB'. Therefore, on filing a request for priority in Canada based on the internationally filed application, the applicant will identify the International Bureau as the receiving office and provide the application number assigned by the International Bureau.

If the international application has acquired priority rights before the International Bureau on the basis of an earlier filed application, those rights would be extended to the application upon national entry in Canada except in situations where restoration of priority rights has occurred (see section 7.03.03).

7.04.03b
Applications filed before the European Patent Office

Under the authority of subsection 88(4) of the Patent Rules the Office acknowledges priority based on an application filed with the European Patent Office (EPO).ix

7.04.04
Extensions of time not permissible

While subsection 26(1) of the Patent Rules generally permits the Commissioner to grant extensions of time limits, subsection 88(5) of the Patent Rules provides that the Commissioner is not permitted to extend time limits for providing the Office information necessary to recognise a request for priority.

7.04.04a
Dies non extension

Where the twelve-month anniversary date defined in paragraph 28.1(1)(b) of the Patent Act is a day when the Office is closed for business, the filing of the pending application may be made on the next day when the Office is open for business as provided by subsection 78(1) of the Patent Act without forfeiting priority rights.

7.05
Claim date based on multiple previously filed applications - May 2014

An application which claims priority from two or more prior applications may have multiple claim dates. Where an applicant has requested priority from two or more previously regularly filed applications, subsection 28.4(4) of the Patent Act provides that

(4) Where two or more applications have been previously regularly filed as described in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a), either in the same country or in different countries,

(a) paragraph 28.1(1)(b), subparagraph 28.2(1)(d)(iii) or paragraph 78.3(1)(b) or (2)(b), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications; and

(b) subsection 28.1(2), subparagraph 28.2(1)(d)(ii) or paragraph 78.3(1)(d) or (2)(d), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications on the basis of which a request for priority is made.

This has the effect of according the earliest possible claim date for subject-matter claimed in the pending application based on the content of the earliest corresponding priority document.

7.06
Withdrawal of a request for priority - May 2014

Under certain circumstances, an applicant may wish to withdraw a request for priority. This may be the case where, for example, the earlier application is withdrawn before publication or where the applicant has determined that later claimed subject-matter is not disclosed in the earlier application.

Subsection 28.4(3) of the Patent Act provides that a request for priority may be withdrawn at any time before a patent is issuedx by filing a request with the Commissioner in accordance with subsection 90(1) of the Patent Rules which provides that

For the purposes of subsection 28.4(3) of the Act, an applicant may withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications, by filing a request with the Commissioner and the Commissioner shall send a notice to the applicant advising that the request for priority has been withdrawn.

Under subsection 90(2) of the Patent Rules, the effective date of a request for withdrawal of priority is the date on which the Commissioner receives the request for withdrawal.

An application for which a Notice of Allowance has been issued may be subject to a withdrawal of allowance where the applicability of prior art under subsection 28.2(1) and section 28.3 of the Patent Act must be reconsidered as a result of the loss of priority.

7.06.01
Confidentiality

An application other than a PCT national phase application is not normally open to public inspection on the date the application is received by the Office.

A confidentiality period of up to 18 months is permitted in accordance with subsection 10(2) of the Patent Act. For applications accompanied by a request for priority, either at the time of filing in Canada or a later date (see section 7.04.01), the confidentiality period is dictated by subsection 10(3) of the Patent Act.

Subsection 10(3) of the Patent Act provides that

The confidentiality period begins on the filing date of the application or, where a request for priority has been made in respect of the application, it begins on the earliest filing date of any previously regularly filed application on which the request is based.

The confidentiality period of an application filed in Canada ends 18 months after the filing date of the earliest priority document.

Subsection 10(4) of the Patent Act provides that

Where a request for priority is withdrawn on or before the prescribed date, it shall, for the purposes of subsection (3) and to the extent that it is withdrawn, be considered never to have been made.

If the applicant withdraws a request for priority stemming from the earliest previously filed application before the expiry of the confidentiality period it may be possible to delay the laying open of the application to public inspection until 18 months from the next earliest priority date or, where no other priority documents exist, the filing date of the application.

Where the applicant seeks to withdraw a request for priority in respect of a non-laid open pending application, the applicant must ensure that the Commissioner receives the request for withdrawal before the end of the 18-month confidentiality period to avoid early publication of the pending application.

 Section 91 of the Patent Rules provides that

For the purposes of subsection 10(4) of the Act, where a request for priority with respect to a particular previously regularly filed application is withdrawn in accordance with section 90, the prescribed date is the date on which a period of sixteen months after the filing date of that previously regularly filed application expires, or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

The request for withdrawal must therefore be made within 16 months of the filing date of the priority application or at a later date if the technical preparations to open the application to public inspection can be stopped. If the request for withdrawal of priority is made after the 18-month period beginning at the filing date of the priority document but prior to the 18-month period beginning at the filing date of the pending application, the pending application will have been laid open. For example, if the pending application is filed on the twelve-month anniversary of the filing date of the priority document, the applicant will generally have 4 months from the Canadian filing date to file a request for withdrawal of priority without prejudicing the confidentiality period.

7.07
Special topics - May 2014

Several additional considerations pertaining to valid priority rights but which are not explicitly addressed by the Patent Act and Rules should be noted.

7.07.01
Types of recognised priority documents

The Office recognises Paris Convention priority based on petty patent applications, applications for inventors' certificatesxi, and utility models filed in foreign countriesxii, as these are considered forms of patent applications. No priority rights for a patent application may be based on an application for an industrial design registration, design patents or their equivalent. In accordance with Article 4 of the Paris Convention, priority rights may not be based on the content of an application for an industrial design.

7.07.02
Same subject-matter in multiple priority documents

As detailed in section 7.03.01, any application filed more than one year before the filing date of a Canadian application may not form the basis of priority for the Canadian application.

Where a first application has been filed more than twelve months before the filing date of a Canadian application and a second application having the same subject-matter is filed within the 12-month period before the filing date of the Canadian application, priority cannot be based on the second application, except for subject-matter exclusive to the second application. In practice an examiner would not be expected to search for such documents but may come across them during a typical prior art search.

An exception to this bar is found in subsection 28.4(5) of the Patent Act which provides relief where the first application, filed more than one year before the Canadian filing date, has never been open to public inspection and will never publish.

If the first application has never been open to public inspection and is considered withdrawn, abandoned or refused by the granting authority, an inventor may be entitled to full priority rights based upon the subsequently filed second application or, where no previously filed applications remain, the claim date of the pending application will be the date the application is filed in Canada.

7.07.03
U.S. continuation and continuation-in-part applications

Under some conditions, priority may be based on continuation or continuation-in-part applications before the United States Patent and Trademark Office. A United States continuation application is an application which has the same specification of an earlier application but contains claims directed to either different subject-matter, i.e., a different invention than claimed in the earlier application or claims a different embodiment of the earlier claimed invention. No new matter is disclosed or claimed. A continuation-in-part application discloses and claims additional subject-matter over the earlier application.

If a Canadian application is filed within one year of a continuation-in-part application, this continuation-in-part application may serve as a priority document for any new matter not disclosed in the original U.S. application from which the continuation-in-part application extends.

Where a Canadian application is filed more than twelve months after the filing date of the original U.S. application, but within twelve months after the continuation-in-part, the applicant is not entitled to priority on subject-matter common to the two U.S. applications, except in circumstances as described below. If both the original and the continuation-in-part applications are filed within the 12-month period preceding the filing of the Canadian application, priority may be based on both the original application and on the new matter in the continuation-in-part.

Where priority is necessary to support a claim date in the prosecution of a Canadian application claiming priority from a U.S. continuation-in-part application only, it is necessary to identify the matter derived from the original U.S. application to determine the priority rights of the applicant. Because a U.S. continuation-in-part application does not identify the new matter added to the original U.S. application, the applicant must submit certified copies of both the original and continuation-in-part applications whenever required to do so by the Office.

Example:

An application is filed on March 1, 2009. In the Petition, the applicant requests priority from a US continuation application filed in the United States on March 2, 2008. The US continuation application is a continuation of a prior US application (the "original US application") filed before the USPTO on February 1, 2008. In the Petition, the applicant provides the application number, country code and filing date of the US continuation application and requests priority from this application.

Analysis:

The Canadian application will not be granted the priority date of the continuation application as the subject matter of the Canadian application was disclosed on February 1, 2008 in the original US application, which is more than twelve months before the date the application was filed in Canada. Note: If the second US application was a continuation-in-part application, the Canadian application would receive the priority from the filing date of the continuation-in-part only for the subject-matter disclosed uniquely therein (see also section 7.05).


Endnotes for chapter 7

iPfizer Canada v. Ratiopharm Inc. 2010 FC 612 at paragraph 84, referring to Apotex Inc. v. Merck & Co.  2006 FCA 323, [2007] 3 F.C.R. 588 at paragraph 55.

ii "Regularly filed application" means any application which bears as its filing date the date on which it is received by the Office or an application filed in the Office at the national stage of an international application.

iiiBodenhausen, G.H.C. Guide to the Application of the Paris Convention for the Protection of Intellectual Property. BIRPI, 1969. pp 37-38

ivSee Article 3 of the Paris Convention.

vRestoration of priority is addressed by Rule 26bis.3 of the PCT

viBristol-Myers Squibb Co. v. Canada (Commissioner of Patents) 82 C.P.R. (3d) 192 affirming 77 C.P.R. (3d) 300 at paragraphs 28-30.

viiOther recognised intergovernmental authorities include the Eurasian Patent Organization (EAPO) and the Gulf Cooperation Council Patent Office (GCCPO).

viiiSee Article 11(4) of the PCT.

ixThe European Patent Office (EPO) grants patents enforceable in any Contracting State of the European Patent Convention (EPC) [see Article 2(2) of the EPC] unless the applicant for the European patent has withdrawn a Contracting State from designation [see Article 79(3) of the EPC]; a granted patent must, however, be validated in each Contracting State.

xSubsection 90(1) of the Patent Rules refers to applicant and application; the patentee ceases to be an applicant for the purposes of subsection 28.4(3) of the Patent Act on the date the application issues to a patent and is therefore not entitled to withdraw priority from the patent.

xiThe term inventors’ certificate replaces the formerly used authors’ certificate but has the same effect. The change was made in the Paris Convention to avoid confusion with copyright authorship.

xiiSee Article 4(I)(2) of the Paris Convention.



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