1.1.14 Priority Document

Date Published

Although the validity of the priority date claimed by a PCT application (including any right of priority restored under PCT Rule 26bis.3 – see 3.11.4 Restoration of the Right of Priority under the PCT) is not an issue in so far as international searching is concerned, it may need to be assessed when producing an ISO - see below.  For the purpose of an international search report the priority date is assumed to be the filing date of the PCT application (ie any citation published prior to the filing date of the PCT application [rather than the priority date] should be cited as a prior publication).  For the purpose of an ISO, however, it may be necessary to determine what priority date a PCT application is entitled to if a citation in the ISR is published after the earliest priority date.  In this case it will be necessary for the examiner to view the priority document, if possible. [PCT/GL/ISPE/7 at Chapter 6]

Examiners may also have a need to view a priority document for reasons unrelated to priority date determination, such as to gain a better insight into the subject matter of the PCT application.

In the most common situation viewing a priority document will be straightforward as it will be an Australian provisional or standard application which can be accessed by the examiner using PAMS.  However, a situation can arise where the priority is sought from an earlier application which is not available by this mechanism (that is, it is a foreign document, as will most likely be the case when the PCT application was originally filed with RO/NZ) and the document is not already in the search file of the PCT application (as may well be the case as the applicant has until 16 months after the priority date to file it).  If an examiner needs to view such a priority document, the examiner is to request a copy of the document together with a translation where appropriate from the PCT Unit via email.  If the PCT Unit proves unable to obtain the document, the priority date is to be assumed valid - see paragraph 17.29 of the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/7).