8.11.3 Priority Date Issues Specific to Convention Applications

Also in this Chapter:

• 8.11.1 Priority Date of Claims

• 8.11.2 Priority Date Specific to Associated Applications (Priority Document is a Provisional)​​​​​​​

• 8.11.4 Priority Date Issues Relating to Amended Claims

Key Legislation:

Patents Act:

• s43 Priority dates  
• s96 (Superseded)

Patents Regulations:

• 3.12 What this Division is about

Related Chapters: 

• 2.21.3.5 Basic Application Outside 12 Month Convention Period

On this page

• Overview
• Subregulation 3.12(2)(b)(iii)
• Disclosure by Way of Disclaimer or Acknowledgement of Prior Art
• Basic Application Outside 12 Month Convention Period

Overview

Under reg 3.12, several kinds of documents may serve as a priority document for a Convention application.  These include:

• a basic application that is related to the Convention application; or
• a specification, or another document filed in respect of, and at the same time as, a basic application that is related to that Convention application.

For priority purposes, matter is deemed to have been disclosed if it was disclosed or claimed in a basic application.  Only that application, or a specification or other document filed in its support and at the same time, may be considered. The requirement of simultaneous filing is important in order that a definite date of disclosure is established, i.e. the date of making the basic application.  (Note, however, ‘Subregulation 3.12(2)(b)(iii)’ below).

Subregulation 3.12(2)(b)(iii)

Subregulation 3.12(2)(b)(iii) provides for situations where the specification accompanying the basic application is a provisional specification and, at a date subsequent to the date of making such an application, a complete-after-provisional specification is filed. Provided the complete-after-provisional specification is filed in a Convention country before the Convention application is made in Australia, reg 3.12(2)(b)(iii) enables the date of filing of the complete-after-provisional specification to be a priority date for relevant claims of a standard patent application.

Where a complete-after-provisional specification is filed in a Convention country before the date of the Convention application in Australia, but was not relied upon for the purpose of establishing a basis for partial priorities, the matter may be subsequently remedied by the filing of an appropriate copy of the specification.

Disclosure by Way of Disclaimer or Acknowledgement of Prior Art

Matter disclosed by way of disclaimer, or acknowledgment of prior art, is not disclosed for the purposes of priority rights.  Disclaimers are to be understood as actual and specific disclaimers and, therefore, will almost always occur in the descriptive portion of the basic application. The principle of law that what is not claimed is disclaimed is not applicable to determining what constitutes a disclaimer in this context.  Similarly, words in the description which limit the invention to the claims are not to be construed as a disclaimer of matter which is described but not claimed.

Basic Application Outside 12 Month Convention Period

Where a claim of a Convention application is fairly based on matter disclosed in a basic application which was lodged more than 12 months before the filing date of the Convention application, its priority date is the date of filing of the Convention application.  This applies regardless of whether the same matter has been disclosed in subsequently filed basic applications made within the specified 12 month period (unless the earlier basic application is taken never to have been made under s43(5)).  

Note: Prior to 15 April 2013, an earlier basic application may have been disregarded under s96.  Any s96 request filed on or after 15 April 2013 is of no effect.

See also 2.21.3.5 Basic Application Outside 12 Month Convention Period.