2.20.5.1A Priority Sources

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.  For all other standard patent applications, see 2.20.5.1 Priority Sources.

A national phase application may claim priority from:

  • an earlier Australian application (provisional, complete or innovation);
  • several earlier Australian applications;
  • one or more foreign applications in a Convention country;
  • an earlier international application;
  • an earlier European application; or
  • both an earlier Australian application and an earlier foreign application in accordance with Article 8 and Rule 4.10.

Under the PCT, the usual Convention priority rights are provided by Article 8(2)(a) and Rule 4.10. This covers priority applications actually filed in a proclaimed Convention country, as well as for such a country, i.e. a country designated in an international or EP application.

Article 8(2)(b) covers priority applications filed in or for Australia. This provides that Australia, in its own national law, shall set the conditions for and the effect of such priority claims.

For the purpose of determining a priority date for a national phase application which claims priority from an Australian provisional, complete or innovation application, this provisional, complete or innovation application is treated, under reg 3.13A, to be analogous to a basic document in a Convention application.

A national phase application, being a complete application under the Act, can claim priority from both an associated provisional, complete or innovation application, and from a basic application. The relevant priority date is determined in the same manner as for an application having a plurality of basic applications, or a plurality of provisional applications, i.e. in accordance with sec 43 and reg 3.13A.

Priority is determined for PCT applications under reg 3.13A both where priority is claimed under Article 8 and where, in the national phase, the application is amended to claim priority from an earlier application, where that claim could have been made under Article 8.  Thus, in both cases the conditions for claiming priority are derived directly from the Paris Convention under Article 8(2)(a).

Note: In certain situations, a national phase 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 (see also 2.12.1.1A Priority Date of Claims).

Restoration of Priority

Under reg 3.13A(2), a national phase application can claim priority from a basic application filed in Australia or in any Convention country more than 12 months before the international filing date of the PCT application, if priority has been restored by the receiving Office under Rule 26bis.3, by the Commissioner under Rule 49ter.2 or by the Commissioner granting an extension of time under sec 223 with the same effect.  If examiners have reason to believe that the priority should not have been restored, they should discuss the case with Patent Oppositions to determine whether the restoration was ineffective.

US Filed PCT Application

Under USPTO procedures, it is permissible for a US filed PCT application to be a divisional or continuation of an earlier application and reference may be made to this under INID Code 60 on the front page of the pamphlet. This may be disregarded for the purposes of national phase examination in Australia.