5.6.2.6 Obtaining priority documents

Also in this Chapter:

• 5.6.2.1 Request for Examination
• 5.6.2.2 Application in a state of lapse?
• 5.6.2.3 Extension of Time requested (s.223 actions)
• 5.6.2.4 Payment of fees
• 5.6.2.5 Translation of specifications (requirements for certification, poor translations)
• 5.6.2.7 Report Dispatch, Correction of Report etc.
• 5.6.2.8 Further Report Considerations
• 5.6.2.9 Convention applications

Key Legislation:

Patents Act:

• s223 Extensions of time  

Patents Regulations:

• reg 3.13A Priority date for PCT application
• reg 3.14D Prescribed documents: basic application

Patent Cooperation Treaty (PCT):

• Article 8 Claiming Priority 

Regulations under the PCT:

• Rule 4.10 Priority Claim
• Rule 26bis.3 Restoration of Right of Priority by Receiving Office
  
• Rule 49ter.2 Restoration of Right of Priority by Designated Office
  

Related Chapters: 

• 5.6.5.2 Whole of Contents 
• ​​​​​​​5.6.1.1 Priority Dates and Filing Dates
• 7.11 Extensions of Time and Restoration of the Right of Priority

On this page

• Overview
• Obtaining and Considering Priority Documents
• Restoration of Priority
• US Filed PCT Application.

Overview

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 where a Convention country is designated.

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.

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 5.6.1.1 Priority Dates and Filing Dates).​​​​​​​

Obtaining and Considering Priority Documents

A copy of a priority document is generally not required for national phase applications, except under the following circumstances:

1. where third parties request a copy of the document;
2. in opposition, when requested by the opponent; or
3. in examination, where the invalidity of the claimed priority date will have an impact on citations raised (for example, 5.6.5.2 Whole of Contents).

The relevant priority document(s) can be downloaded from Patentscope or another database, for example, USPTO Public PAIR, and then added to the case file.

If the priority document is not available, examiners should contact CEG with a request to obtain the document from WIPO. If CEG cannot obtain the priority document within a reasonable time (about 3 weeks), examiners should issue a report with a request that the applicant provide a copy of the document certified within 3 months (reg 3.14D(1)(c)). Examiners may also request a translation of the priority document at the same time.

Failure of the applicant to comply with a request to provide the priority document within the time limit will result in a loss of priority.  If this situation arises, examiners should consult Patent Oppositions before taking any further action.​​​​​​​

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 s223 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.