6.3.8.3 Box II Priority

Also in this Chapter:

• 6.3.8.1 Front Page and Notification Application Details

• 6.3.8.2 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs​​​​​​​

• 6.3.8.4 Box III Non-establishment of Opinion

• 6.3.8.5 Box IV Unity of Invention

• 6.3.8.6 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability

• 6.3.8.7 Box VI Certain Documents Cited

• 6.3.8.8 Box VII Certain Defects

• 6.3.8.9 Box VIII Certain Observations

Key Legislation:

Regulations under the PCT:

• Rule 17.1 Obligation to Submit Copy of Earlier National or International Application

• Rule 26bis.3 Restoration of Right of Priority by Receiving Office

• Rule 64.1 Prior Art

• Rule 66.7 Copy and Translation of Earlier Application Whose Priority Is Claimed

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

Administrative Instructions under the PCT:

• s421 Invitation to Furnish a Copy of the Priority Document

PCT ISPE Guidelines

• Paragraphs 17.28 – 17.30 Box No. II: Priority 

Related Chapters:

• 6.1.12.5.2 Citation Category

• 7.11 Extensions of Time and Restoration of the Right of Priority

• RIO - Processing PCT Tasks - Box II

• RIO - Home/My Tasks

On this page

• When completion of Box II is not required

• When checking the priority is required

• Validating the right of priority

• PCT application filed outside the 12-month priority period

• Determining the adequacy of the priority disclosure

  • Priority document is an Australian document

  • Priority document is a foreign document

  • Priority document is not available

• Consideration of the right of priority

  • Priority document has an inadequate disclosure

  • Priority document has an adequate disclosure

  • Partial Priorities

• Example – PCT Application based on AU Complete / AU Provisional

• Examiner process flowchart

When completion of Box II is not required

In the following circumstances checking the validity of the Earliest Priority Date (EPD) and completing Box II is not required when:

1. All citations mentioned in the International Search Report (ISR) were published prior to the EPD.

2. The only citations mentioned in the ISR that were published after to the EPD are A category (i.e. ‘P,A,’ or ‘T’).

When checking the priority is required

The examiner will need to check the validity of the EPD if the following both apply (see PCT/GL/ISPE/12 paragraph 17.29):

• Any of the citations of the ISR were published after the EPD (i.e., P or E category citations).

• None of these documents were categorised as A, then the validity of the EPD requires checking.

Validating the right of priority

Validation of the right of priority requires both of the following:

1. A determination that the PCT application was filed within 12 months of the claimed priority document or is otherwise entitled to the associated priority

2. An assessment as to whether the priority document contains an adequate disclosure of the invention which is the subject of the PCT application and to which the citation relates

PCT application filed outside the 12-month priority period

If the following criteria are both determined, then the opinion should proceed on the basis that the priority claim is valid:

1. The PCT application has NOT been filed within the 12-month priority period, taking into account:

   • Whether the 12-month priority period expired on a non-working day or official holiday.

   • Determining the international filing date using Rule 80.5.

2. A Restoration of Right of Priority under PCT Rule 26bis.3 meets one of the following criteria:

   1. HAS BEEN requested AND granted

      • This must be noted at item 3 (‘Additional observations’).

      • The opinion should proceed on the basis that the priority claim is valid.​​​​​​​

   2. HAS BEEN requested, but has NOT YET been determined,

      • This must be noted at item 3 (‘Additional observations’), including the following comment:
        ‘The applicant has requested a restoration of right of priority under Rule 26bis.3 which is yet to be determined.’

      • The opinion should proceed on the basis that the priority claim is valid.

If a Restoration of Right of Priority under PCT Rule 26bis.3 has either:

• Not been requested

• Been refused (see 7.11 Extensions of Time and Restoration of the Right of Priority)

then:

• The examiner marks the checkbox at item 2 (‘This opinion has been established as if no priority had been claimed due to the fact that the priority claim has been found invalid...’).

• The opinion should proceed on the basis that the priority claim is invalid.

Determining the adequacy of the priority disclosure

In order to be able to determine the adequacy of the priority disclosure, the examiner should carry out the following steps (see also 6.1.14 Priority Document and Chapter 6 Priority of the PCT Search Exam Guidelines).

Priority document is an Australian document

Where the priority document is an Australian document (e.g. AU provisional), view the document on RIO.

Priority document is a foreign document

Where the priority document is a foreign document and it is not already in the file, examiners should first check whether the document is available from PatentScope. This scenario will most likely be the case when the application was originally filed with RO/NZ.

If the document is present, the examiner should download a copy place it in the case file.

Priority document is not available

Where the priority document is not available, examiners should request a copy of the document together with a translation where appropriate from the PCT Unit via email. If timing considerations require the issuance of an opinion before the priority document has been obtained, then:

• In the case of an International Search Opinion (ISO), the ISO should be issued with the checkbox at item 1 of Box II marked without waiting to obtain the priority document.

  • Item 1 of Box II reads ‘The validity of the priority claim has not been considered because the International Searching Authority does not have in its possession a copy of the earlier application whose priority has been claimed or, where required, a translation of that earlier application…’

  • This scenario can occur due to the requirement of 3 months to establish the ISO and ISR.

• In the case of an International Preliminary Examination Opinion (IPEO), an appropriate comment should be made under the heading ‘Additional observations, if necessary:’ in item 3 of Box II of the IPEO.

• In the case of an International Preliminary report on Patentability Chapter II (IPRPII), where such a copy of the priority document (or a translation thereof) is not available because of non-compliance with Rule 17.1 by the applicant:

  • The IPRPII may be established as if the priority had not been claimed.

  • This is to be indicated in the IPRPII (see Rule 66.7 and Ad. Inst. 421).

Consideration of the right of priority

Priority document has an inadequate disclosure

​​​​​​​If as a result of this check, it is determined the priority document associated with the EPD does not contain an adequate disclosure of the invention of the PCT application, as claimed in any of the claims:

• The right to priority is assessed invalid.

• The checkbox at item 2 of Box II of the ISO, IPEO or IPRPII must be marked (see PCT/GL/ISPE/12 at paragraphs 17.28 to 17.30 and Rule 64.1).

  • The checkbox at item 2 reads ‘This opinion has been established as if no priority had been claimed due to the fact that the priority claim has been found invalid...’.

Priority document has an adequate disclosure

If any one of the claims of the PCT application is adequately supported by the priority document, checkbox at item 2 must not be marked.

Where the right to priority is assessed and is found to be valid, an observation to this effect should be included in item 3 ‘Additional observations’.

Note: ’Additional observations’ relate to priority considerations only and not to clarity, descriptive support, defects or any other consideration relevant to Box VIII.

Partial Priorities

Examiners should consider the following for whether the priority document sufficiently supports all the claims:

1. The right to priority is assessed as above and is found to be valid, but,

2. There are nevertheless some claims or parts thereof (i.e. embodiments) directed to invention(s) for which the priority document associated with the EPD does not contain an adequate disclosure.

In such a case both the following apply:

1. These claims or embodiments are to be attributed (for the purposes of assessment of novelty and inventive step) to either:

   1. the priority date of the oldest priority document that does disclose the embodiment claimed

   2. the filing date of the international application, as appropriate

2. An observation to this effect included in item 3 ‘Additional observations.’

When assessing the relevance of cited documents in such cases, documents which are categorised X for some claims or embodiments, but P,X for other claims or embodiments, should be raised. The examiner should discuss citations as appropriate to the relevant claims — in Boxes V and VI respectively — using supplemental boxes as necessary.

Example – PCT Application based on AU Complete / AU Provisional

One situation where the validity of right to priority may require consideration is when both:

• The priority document is an AU complete application which itself is associated with an AU provisional.

• Only the complete was made within the 12 months before the PCT filing date.

A claim in the PCT application to material disclosed in the provisional and the complete application would only have a priority of the PCT filing date. The provisional and/or complete application then may also be citable against that claim, most probably as either of an ‘E,’ ‘L,’ or ‘P’ document (see 6.1.12.5.2 Citation Category).

Examiner process flowchart