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2.12.1.1A Priority Date of Claims

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.12.1.1 Priority Date of Claims.

General

Under sec 43(1), each claim of a specification must have a priority date.  The priority date of a claim is primarily of relevance when assessing the claim against the criteria of novelty and inventive/innovative step.

The actual priority date of a claim is determined by the provisions of the Act and Regulations. However, during search and/or examination it should not usually be necessary in the first instance to determine the actual priority date of a claim.  When conducting a search, examiners should keep in mind both the earliest priority date and the latest possible priority date (i.e. the date of filing). If, as a result of the search, a document is found which would constitute a citation against a claim only if the claim is not entitled to the earlier priority date, examiners should proceed to determine the priority date of the claim in question.

However, where the determination of priority dates is difficult or time consuming, it is not unreasonable to take the date of filing as the prima facie priority date, with the onus of rebuttal being placed upon the applicant or attorney.

Note: In certain situations, an application under examination may claim priority from a published document, such as a PCT application.  That PCT application may in turn have its own priority document, which may have been filed more than 12 months before the filing date of the application being examined.  Where these circumstances arise, examiners should check the priority date of the claims.

Note: In relation to an international application, reg 3.5AE and reg 4.4, and Article 2(xi) of the PCT, define a "priority date" for the application for the purposes of computing time limits. This has no bearing on the priority date of claims as discussed below.

Determination of Priority Dates

Under sec 43(2), the priority date of a claim is the date of the filing of the specification, unless certain circumstances apply.  In these situations, the priority date is the date determined under the Regulations.

A single complete application may derive priority by operation of more than one provision of the Act and Regulations, for example as a Convention application, a divisional application or by association with a provisional application. Priority dates are determined by Chapter 3, Division 2 of Part 1 of the Regulations, comprising reg 3.12 to reg 3.13E.

In general, if a claim defines an invention that is disclosed in a priority document or a "parent application" (for a complete specification filed in respect of a divisional application) in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art, then the priority date of the claim is the date of filing the priority document or "parent application".

It must be noted that when determining priority, it is permissible to have regard to the combined disclosure of all the documents filed for a provisional, earlier or basic application that were filed on the date the application was filed. For example, if the abstract and specification that were both filed with the earlier priority application, when taken together, disclose the invention claimed in the complete specification in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, the priority date of the claim is the filing date of the priority application. This is the case even if the abstract on its own, or the specification on its own, does not disclose the claimed invention.

Regulation 3.13 provides for most priority dates including:

  • reg 3.13A - claims of the specification of a PCT application which may have one or more earlier Australian applications, or one or more basic applications;
  • reg 3.13B - claims of the specification of a Convention application, where there may be one or more related basic applications;
  • reg 3.13C - claims of a complete specification associated with one or more provisional specifications;
  • reg 3.13 D - claims of a complete specification filed pursuant to sec 79B (divisional applications filed prior to grant); and
  • reg 3.13E - claims of a complete specification filed pursuant to sec 79C (divisional applications for innovation patents).

These regulations require that the priority document(s) “clearly discloses” the invention claimed.  Subregulation 3.12(4) provides that a priority document “clearly discloses” an invention if the document discloses the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

Note: Special priority considerations which apply to applications made under the PCT route are discussed in 2.20.5.1 Priority Sources.

In certain circumstances, the Act and Regulations may also determine further priority dates different from the date of filing of the complete specification.

The provisions which cover these priority dates are:

  • sec 35, sec 36 and sec 43(2)(a) and reg 3.13 – where claims of a complete specification are filed pursuant to the operation of sec 35 and sec 36; and
  • sec 114 and reg 3.14 – where claims of a complete specification claim an invention disclosed in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art only as a result of the amendment (see also 2.12.1.4A Priority Date Issues Relating to Amended Claims).

Micro-Organisms

The Regulations also set out the procedure for determining priority dates when the claimed invention relates to a micro-organism.  The procedure varies depending upon certain timing requirements as indicated below.

  1. For:
  • standard patent applications/innovation patents with an examination request filed on or after 25 August 2015; or
  • innovation patents where the Commissioner had not decided before 25 August 2015 to examine the patent;

if:

  • the specification of the priority application included such relevant information about the micro-organism as was known to the applicant at the filing date of the application;
  • the requirements of sec 6(c) are met in relation to the complete specification that contains the claim (to the micro-organism); and
  • the micro-organism was deposited with a prescribed depository institution on or before the filing date of the priority application;

then the priority application is considered to disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.  In this situation the priority date is the filing date of the priority application.

The Regulations recognise (in the same way as in sec 41) that an invention involving a micro-organism may not be practically disclosed in a written specification and that a deposit under the Budapest Treaty should be taken into account for the purpose of determining priority dates.

2. For all other standard patent applications/innovation patents, if:

  • the specification of the priority application included such relevant information about the micro-organism as was known to the applicant at the filing date of the application;
  • the priority application discloses the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art, other than in relation to the description of the micro-organism;
  • the requirements of sec 6 (c) are met in relation to the complete specification; and
  • the micro-organism was deposited with a prescribed depository institution on or before the filing date of the priority application;

then the priority date may be the filing date of the priority application.

The Regulations recognise (in the same way as in sec 41) that an invention involving a micro-organism may not be practically disclosed in a written specification and that a deposit under the Budapest Treaty should be taken into account for the purpose of determining priority dates.

This is implemented on the basis that the complete specification meeting the requirements of sec 6(c) is specified as a priority document for the purpose of sec 43 and, under sec 41, is taken to provide an enabling disclosure of the invention including the micro-organism. The priority date, however, is the filing date of the priority application, provided the other conditions are met, including that the deposit is made on or before that date.  

Level of Disclosure Required

The priority date of a claim is the date of filing of a specification which first discloses the claimed invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art and from which the claim is entitled to claim priority. The disclosure required in a priority document is substantially the same as the enabling disclosure required for the purposes of sec 40(2)(a) (see 2.11.3.4.2A Section 40 Enabling Disclosures).

If a priority document is silent with regard to any essential element of a claim, the claim is not entitled to an earlier priority date.  In particular, if a claim in a priority document is broad enough to cover a certain technical feature, it does not follow that it discloses that feature for the purpose of establishing priority.  Nevertheless, implicit disclosure of a feature can be taken into account if the feature would have been derived “directly and unambiguously, using common general knowledge, from the previous application as a whole” (G 298) (see also paragraph below).

A claim may properly derive priority from a prior specification where the specific matter added to the disclosure of that specification is common general knowledge (Scherico Ltd.'s Appln. (1968) RPC 407).  For example, if the prior specification does not disclose the material of which a particular part is made, but it is common general knowledge (at the relevant date) that such a part may be made of a certain material, then the specification may be regarded as disclosing the part made of that material. If examiners are unaware that certain matter is common general knowledge, it may be assumed not to be until evidence to the contrary is provided. The extent and nature of the evidence required is the same as that required of examiners citing common general knowledge during examination.

Selections

Where an invention resides in a selection, the claims of a complete specification will not be enabled by the disclosure of a priority document, if the priority document did not provide a clear enough and complete enough (enabling) disclosure of the inventive selection. This should be particularly kept in mind where, as a result of an amendment in response to a novelty and/or inventive step objection, the invention of the complete specification becomes one of selection, or becomes a materially different selection from that originally disclosed in the priority document (see Cooper's Animal Health v Western Stock Distributors (1987) 11 IPR 20).  However, where a feature in a claim is merely restricted to a subset of alternatives taught in the specification and the alternatives are taught in the priority document, the priority document will contain a sufficiently enabling disclosure of the claimed subset.

Claims With More Than One Priority Date

A claim may possess more than one priority date.  Under sec 43(3), where a claim of a complete specification defines more than one form of an invention, then the claim must be treated as constituting a separate claim for each form of the invention for priority date purposes. Consequently, a claim may possess more than one priority date. Examples where this may occur include:

  • a claim directed to alternative forms first disclosed in separate documents;
  • a claim appended to a number of claims having different priority dates;
  • an omnibus claim referring to drawings or examples disclosed on different dates.

In this case, the words "form of the invention" mean matter which clearly falls within the concept of the invention, as the claiming of different inventions in one claim is precluded under sec 40(4). Each separate "form of the invention" can, by virtue of sec 43(1), have only one priority date.

However, as discussed in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [251]; 107 IPR 177, not every potential variant of the defined invention can be treated as a different form of the invention which is to be given its own priority date.

Whether an invention has different forms was also considered in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 at [58] – [87].  In this case, the claims were cast in terms that envisaged and provided for different forms of the invention, in contrast to the claims considered in AstraZeneca supra.

Specifications Containing Claims With Different Priority Dates

Under sec 43(4), the claims of a specification may have different priority dates. These different dates may result from, for example, a complete specification deriving priority from more than one priority document, or in the case of a divisional application, from more than one “parent application”.

Case Law

The following decisions determined priority dates in the context of fair basis, however the circumstances of each case are relevant to whether the priority document provided a clear enough and complete enough (enabling) disclosure of the claimed invention:

  • In the absence of any suggestion in the complete specification that there was invention in restricting the starting materials claimed, compared with those disclosed in the provisional specification, the claims were entitled to the earliest priority date, i.e. the filing date of the provisional.

British Drug Houses Ltd.'s Appln. (1964) RPC 237


  • Where claims in a specification omit a feature described in a priority document as essential to the invention, the priority document does not provide a clear enough and complete enough (enabling) disclosure of the claimed invention.

International Playtex Inc.'s Appln. (1979) AOJP 1188


  • Where two features of the claims were not disclosed in the provisional specification, the claims were only entitled to the later priority date, i.e. the filing date of the complete specification.

Dunn v Ward 1 IPR 595


  • An essential constituent of a claimed formulation was a particular solvent in a specified quantity. This solvent was mentioned in the provisional specification only as one of a number of possible alternatives and other solvents were discussed in a more favourable light. The special advantages arising from the use of the particular solvent were not apparent from a reading of the provisional specification.

The Court found that identification of that constituent as a key element of the claimed invention could properly be regarded as involving an inventive step. A relevant factor in the decision was that the claimed invention was the formulation, whereas the invention disclosed in the provisional specification was a method of treating sheep.

In this situation, a conclusion that the provisional specification lacked a clear enough and complete enough (enabling) disclosure would not be because a feature which was optional in the provisional specification was included in the claim. Instead, it would be based on the conclusion that the whole nature of the invention had changed between the provisional and complete specifications.

Cooper's Animal Health v Western Stock Distributors 11 IPR 20

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