5.6.1.1 Priority Dates and Filing Dates

Date Published 09 Oct 2023

Also in this Chapter:

Key Legislation:

Patents Act:

s6 Deposit requirements
s10 Certain international applications to be taken to have been given an international filing date
s29A Applications for patents--special rules for PCT applications
s35 Applications by eligible persons following revocation by Commissioner
s36 Other applications by eligible persons
s41 Specifications: micro-organisms
s43 Priority dates
s114 Priority date of claims of certain amended specifications
s222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
s 229 Instrument determining formalities requirements for patent documents

Patent Regulations:

reg 3.12 What this Division is about
reg 3.13E Priority date for divisional application after grant of innovation patent
reg 22.10AB Days when office not open for business

Patent Cooperation Treaty (PCT):

Article 2 Definitions
Article 8 Claiming Priority (see also Article 4 Paris Convention)
Article 11 Filing Date and Effects of the International Application
Article 12 Transmittal of the International Application
Article 14 Certain Defects in the International Application
Article 25 Review by Designated Offices

Regulations under the PCT:

Rule 80.5 Expiration on a Non-Working Day or Official Holiday

Related Chapters:

Priority Date of Claims

Under s43(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 (that is, 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 that 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 also that 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 s43(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 that special priority considerations which apply to applications made under the PCT route are discussed in 5.6.2.6 Obtaining priority documents.

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:

s35, s36 and s43(2)(a) and reg 3.13 – where claims of a complete specification are filed pursuant to the operation of s35 and s36; and
s114 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 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.

Case 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 s6(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.

In this case, 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.

Case 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 s6(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.

In this case, the priority date may be the filing date of the priority application.

In both cases, the Regulations recognise (in the same way as in s41) 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 s6(c) is specified as a priority document for the purpose of s43 and, under s41, it 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 s40(2)(a) (see 5.6.7.2 Clear enough and complete enough disclosure).

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, if the priority document did not provide a clear enough and complete enough (enabling) disclosure of the inventive selection, the claims of a complete specification will not be enabled by the disclosure of a priority document. 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 s43(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; and
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 s40(4). Each separate "form of the invention" can, by virtue of s43(1), have only one priority date.

However, as discussed in AstraZeneca AB v Apotex Pty Ltd (2014) FCAFC 99 at paragraph 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 paragraphs 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 s43(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, that is, the filing date of the provisional.
British Drug Houses Ltd's Application [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 Application [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, that is, 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.

Priority Date Issues Specific to Associated Applications (Priority Document is a Provisional)

A complete application may be associated with one or more provisional applications, including provisional applications arising from a request under s37 , to treat a complete application as a provisional.

A complete application can validly claim priority from both an associated provisional 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.

Priority Date Issues Specific to Convention Applications

Regulation 3.13B indicates the type of documents that may serve as a priority document for a Convention application (see Article 4 Paris Convention). This includes all the documents filed at the same time as a basic application that is related to the 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 (taken individually or together) filed in its support and at the same time, may be considered. The requirement of simultaneous filing, under s43AA and reg 3.14B, is important in order that a definite date of disclosure is established, that is, the date of making the basic application. (Note ‘Subregulation 3.13B(3)’ below).

Subregulation 3.13B(3)

Subregulation 3.13B(3) 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 3.13B(3) stipulates that the complete-after-provisional application is taken to be another related basic application filed on the day the complete-after-provisional specification was filed.

Basic Application Outside the 12-Month Convention Period

Where a claim of a Convention application is enabled by the disclosure of 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)).

Priority Date Issues Relating to Amended Claims

Section 114 provides a general mechanism for determining the priority date where a complete specification has been amended and can be invoked prior to acceptance.

The priority date of the claim is the date that the amendment was filed (reg 3.14) if a previously allowed amendment results in a specification claiming an invention that:

prior to the amendment was not disclosed in a sufficiently clear enough and complete enough manner for the invention to be performed by the person skilled in the art; but
after the amendment, was sufficiently disclosed.

The most common reason for invoking s114 is in relation to national phase applications, where the specification is deemed amended under the circumstances of s29A and reg 3.5AC.

Note that the provisions of s29A and reg 3.5AC only apply to PCT applications filed on or after 15 April 2013.

Also note that s114 does not apply where an amendment is allowed under s102(3).

Filing Dates

Patent Applications Other Than PCT Applications

An application is made by filing a patent request accompanied by a complete specification. Each application is given a filing date in accordance with reg 3.5 and this date is subsequently recorded in RIO. The filing date will be the date of filing of:

information in English, which either explicitly or implicitly indicates that what is filed is intended to be a complete specification for a patent;
the name of the applicant and/or an address; and
information which also, on the face of it, appears to be a description:
- does not have to be in English;
- may be a drawing, graphic or photograph; and
- may be a reference, in English, to a previously filed application, which may or may not be in English.

Where any of the above requirements is not complied with, the Commissioner will notify the applicant and allow them two months to comply or make observations. If the applicant does not respond within the time limit, then the application will be treated as not having been filed. If the applicant responds, and as a consequence, the application is now considered to satisfy the requirements, the filing date will be the date of the applicant's response. If, as a consequence of observations made in a response, the application as originally filed is considered to meet requirements above, the filing date will be the original filing date.

Missing Parts

Where the application complies with the requirements above, but it is noticed that parts of the application appear to be missing, the Commissioner will notify the applicant and allow them two months in which to file the missing parts. Note, however, that “notice” in reg 3.5A means in the normal process of according a filing date to the application and does not encompass the situation where the Commissioner is made aware of a missing part by having an applicant draw the missing part to the Commissioner’s attention (see Glad Products Company’s Application [2006] APO 26).

If, after having been notified of missing parts, the applicant subsequently files the missing parts, then the filing date will be the date that those parts were filed. However, if the applicant files the missing parts and then subsequently withdraws them within one month of the Commissioner notifying the applicant of the later filing date, that date will be removed and the original filing date will stand.

Where parts of an application appear to be missing and the applicant claims priority from an earlier basic application or associated provisional application, if the applicant files a copy of the earlier application, accompanied by a translation if necessary, within 2 months of being notified of the existence of the missing parts and:

the missing parts are completely contained within the earlier application;
the location of the missing parts in the earlier application is indicated; and
the original application contained an indication that the contents of the earlier application were incorporated in the application;

then the filing date will be the original filing date.

In any of the situations referred to above, if the applicant does not respond to a notification from the Commissioner, the filing date will be the original filing date. In this circumstance, the missing parts may only be incorporated into the application by amendment under s104, if allowable.

PCT Applications

PCT Applications Filed on or After 15 April 2013

The filing date of a PCT application is determined under reg 3.5AA. In general, the filing date is the international filing date as indicated on the front page of the PCT pamphlet. In rare circumstances, the Commissioner may treat another date as the international filing date (reg 3.5AA(b)), or give an international filing date to an application where no date was given by the receiving Office (reg 3.5AA(c)).

PCT Applications Filed Before 15 April 2013

The filing date of a PCT application is determined under s88. In general, the filing date is the international filing date as indicated on the front page of the PCT pamphlet. In rare circumstances, the Commissioner may treat another date as the international filing date (s10).

According International Filing Dates and Article 25 Applications

Where an international application designating Australia is accorded an international filing date, a PCT application will result. Where an international filing date is not accorded by the receiving Office, the application is taken to be withdrawn. However, such an application may still be considered to be a PCT application in spite of this by virtue of s10.

A variety of defects may result in an application not being accorded an international filing date by the receiving Office, such as Article 11 defects and/or Article 14 defects.

The International Bureau (IB) will consider the international application to be withdrawn under Article 12(3) if a record copy (i.e. a true copy) of the international application has not been received by the IB within the prescribed time limit. However, the application will nevertheless have an international filing date accorded by the receiving Office (provided it fulfilled the requirements of Article 11(1)(i) to (iii)).

Upon receipt of a declaration from the receiving Office of non-accordance of a filing date, or a notification from the IB that the international application is considered withdrawn under Article 12(3), applicants may request the IB to send copies of any document on file to any of the designated Offices that they name by virtue of Article 25(1)(a).

Where Australia is one of the named designated Offices, CEG will create a case file for the documents provided by the IB, allocate a 10 figure Australian application number and ask the relevant Assistant General Manager to review the case.

Where:

a refusal to accord an international filing date by the receiving Office; or
a declaration that the international application is withdrawn by the receiving Office; or
a finding by the IB leading to the international application being withdrawn;

was a result of an error or omission on the part of the receiving Office or IB, Article 25(2)(a) directs the designated Offices to treat the international application as if such an error or omission had not occurred.

The provisions of the Regulations enable Australia, as a designated Office, to decide on the matter of error or omission on the part of the receiving Office or IB. Accordingly, if the Assistant General Manager finds that such an error or omission:

Has Occurred

Provided the prescribed fees have been paid and a verified translation (if required) has been filed, the Assistant General Manager will direct that the application be treated as a PCT application.
The format of the documents will be different from the usual PCT application, as there will be no published pamphlet (and therefore no front page containing all the bibliographic details) and no ISR. Instead, the file will contain a copy of the international application including the original request form, together with a translation if required. Examination should be carried out in accordance with the procedures outlined in 3.3.2 Use of FERs (however see also 5.3.1.1 Formalities required and assessed at filing).
In the situation where the receiving Office did not accord an international filing date, the application will be given the international filing date it should have been given under the PCT by virtue of sec 10 (see also Article 11).
The application will become OPI.

Has Not Occurred

CEG will ask the applicant whether the application is to proceed as an ordinary national application, in which case:

The benefit of an international filing date will not be accorded the application.
The filing date is the date of receipt in Australia of the documents provided under Article 25(1)(a).
The application will follow the usual national application procedures, i.e. all filing, indexing and examination requirements apply.
Time constraints will almost certainly preclude the issue of any direction to the applicant to take any necessary action to ensure the application complies with requirements prescribed by the Regulations.
The application will become OPI.

Effect of Hours of Business, Time Zones, and Public Holidays

The date of filing for documents filed in the Office is the date that the Office receives the document. For paper documents, documents cannot be received outside the hours which the Office is open for business. Documents filed electronically after close of business of the Office, but before midnight (in the time-zone of the Office), are entitled to that date as their filing date, provided that transmission is completed before midnight. However, documents received all or in part after midnight will have a later filing date based on the actual date that the whole document was received.

Under s222A, if the end of a period for filing a document occurs on a Saturday, Sunday or a day that the Office is not open for business, that period expires on the next day that the Office is open for business. However, if a document is filed on a Sunday, its filing date is Sunday's date, not the date of the previous Friday.

The Office is not open for business on Australia Day and Anzac Day (reg 22.10AB(1)), or any other day that is declared by the Director General or other prescribed person. Under reg 22.10AB(2), the Director General and Deputy Director General are both able to declare such days autonomously. Other Senior Executive Service (SES) employees of IP Australia may also declare such days, however only with the agreement of the Director General, Deputy Director General or another SES employee.

Declarations will be published in the Official Journal and on the 'What's New' and 'Official Notices' pages of the IP Australia website. Canberra (ACT) public holidays are covered by declarations made by the Director General or other prescribed person (as defined above). Note that only ACT public holidays are applicable to the filing of documents with the Office, that is, public holidays in other states and territories are not relevant.

Note that where there is conflicting evidence regarding the date of filing a document, the matter should be referred for determination to the Assistant General Manager (Oppositions). This may occur, for example, where a party has a receipt for filing a document with the Office, but the Office has no document on file and no record of receipt.

Situations Where Section 222A is Not Applicable

Section 222A of the Act does not apply to the following actions:

an act in relation to proceedings in a court or a tribunal; and
an act done under Chapter 20 (Individual Patent Attorneys) of the Regulations.

However, the Acts Interpretation Act 1901 still applies to these matters.

Note that Section 222A does not apply to an act done under the PCT. Note, however, that Rule 80.5(iii) does apply and has a similar effect where public holidays are concerned.

Discrepancies in Paper Filing Date

Various categories of paper documents filed with the Office are converted to electronic format after filing. However, occasionally, the paper documents will carry a physical date stamp which conflicts with the filing date recorded in the case file. Thus, there is the potential for uncertainty to arise about what filing date is to be attributed to a particular document. Where there are any discrepancies in the filing date of a document, examiners should contact CEG and advise them of the situation.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023