5. Cases where multiple priority dates apply

Date Published

An application filed in Australia may claim one or more priority dates based on corresponding applications made appropriately in other Convention countries, and may nominate in their convention application goods and/or services which are not included in any of the corresponding earlier applications.


5.1

If more than one priority date applies in relation to a convention application as a result of a claim for a right of priority, the notice claiming priority must, as well as stating the details at 2.1, also specify which goods and/or services are covered by each earlier application(s) (subreg 4.6(3)). Multiple priority dates may arise in the circumstances below.


5.1.1

Multiple priority dates may occur where there is only one earlier application but the earlier application is in respect of some only of the specification claimed in the convention application. This means that the goods and/or services covered by the earlier application will have the priority date of the earlier application and the remainder of the specification will have as its priority date the date on which the application was filed in Australia.


5.1.2

Multiple priority dates may occur where there is more than one earlier application and those earlier applications are in respect of all or some only of the specification claimed in the convention application. This means that the goods and/or services in the convention application that are covered by the earlier applications will have the priority date of the appropriate earlier application. If some goods and/or services are not covered by an earlier application, then they will have as their priority date the date of filing in Australia.


5.2

During the course of examination, some goods and/or services may be deleted from the specification for various reasons.

5.2.1

If there is only one convention priority date claimed, and such changes result in the deletion of all the goods and services for which priority is claimed under that date, the examiner should request that the applicant agree to delete the convention claim. This request should be included with any offer to accept or recommend acceptance of an application if these goods or services are deleted.


5.2.2

If there are multiple convention priority dates claimed and all the goods and/or services for which priority is claimed under the earliest date are deleted, the examiner should request that the applicant agree to the earliest convention priority date being substituted for the next earliest for which goods and/or services remain in the specification.


5.2.3

The above two requirements do not apply if the application is a divisional application, or the deletion is made due to or after it becoming the parent of a divisional application.



The reason for the above practice is to avoid unnecessary confusion regarding the earliest priority dates of applications or registrations. Examiners are required to request deletion of, or amendments to, convention claims arising from a narrowing of the specification only in the rare circumstances where there are no goods or services remaining in the specification for which the earliest priority date is claimed.