Foreign Patent Priority Right
In many foreign countries, patent applicants are granted the opportunity to assert their priority right based on a pending patent application filed in their own country (such as the United States). This priority right, also known as the right of priority, is time-limited and is established by the initial filing of a patent application. To claim priority, the subsequent patent application must explicitly reference the first application by stating its filing date and serial number. By properly asserting the claim of priority, the filing date of the first patent application, known as the "priority date," is considered the effective date of filing for assessing novelty and non-obviousness during the examination of the subsequent patent application. As a result, there are significant advantages to claiming priority to an earlier patent application in your country.
Why Priority Claims are Essential for Patents: Understanding the Importance and Benefits
Priority claims play a significant role in the field of patents as they determine who gets to the Patent Office first and secures protection for their invention. The essence of patenting is to be the first to file a patent application before others with similar inventions do so. To establish this early filing date, a priority claim becomes crucial by linking a later-filed patent application to an earlier-filed one. This earlier application, known as the priority application, must generally share common subject matter and inventorship with the later application for a priority claim to be valid. By making a priority claim, the subject matter in the later application is retroactively attributed to the earlier filing date, also known as the priority date. In essence, priority claims enable inventors to secure their place in the race to the Patent Office and ensure their rights to their inventions.
Priority deadlines
If your initial patent filing for a specific invention is made in your own country (e.g., the US), the following priority deadlines are applicable:
- You have a 12-month deadline to file applications in non-PCT foreign countries.
- You also have a 12-month deadline to file either:
a) A PCT (Patent Cooperation Treaty) application, or
b) Patent applications directly in foreign countries, while making a conventional priority claim under the Paris Convention.
Priority deadlines: starting from PCT application
When your initial patent filing is a PCT (Patent Cooperation Treaty) application for a specific invention, you are typically granted a period of 30 months from the PCT filing date to nationalize the application in each desired PCT member country. However, it's important to note that in certain PCT member countries, the national stage deadline is extended to 31 months. Additionally, there are non-PCT countries that may provide a window of 12 months from the PCT filing date for filing your patent application.
What if you missed a priority deadline?
If you happen to miss a priority deadline, there might be provisions that allow you to file a late application while still preserving your priority claim. However, it is important to note that in such cases, you may be required to submit additional declarations and pay applicable government fees. The possibility of filing a late application with a maintained priority claim depends on the specific circumstances and regulations of the respective patent office.
Priority claim between a parent and child application
When filing a continuing application, there are various motivations, such as incorporating new subject matter or pursuing different claims from those approved in the parent application. To establish a priority claim in a continuing application, it is necessary to submit the child application while the parent application is still being reviewed and has not yet been granted or abandoned.
Need help with a foreign patent application?
If you require assistance with coordinating your international patent filings, we are here to help. Get in touch with patent attorney Jongil Lee via email at daeilpat@gmail.com to explore how we can assist you in filing your foreign patent applications and effectively managing them within your budget.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- How to apply for an international patents: Direct filing vs PCT
- PCT Application: A Guide to Obtaining Foreign Patents
- Mastering the PCT National Phase: Everything You Should Know
- Advantages of filing a PCT international patent application in Korea, not in your home country
- Understanding Priority Claims for Foreign Patent Applications
