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

para 17.28-17.30 Box No. II: Priority

Related Chapters:

7.11 Extensions of Time and Restoration of the Right of Priority

Note: In the following circumstances checking the validity of the EPD and completion of Box II is not required:

Where all citations mentioned in the ISR were published prior to the EPD.
Where the only citations mentioned in the ISR that were published after to the EPD are A category (i.e. P,A or T)

Where any of the citations of the ISR were published after the EPD (i.e. P or E category citations), and none of these documents was categorised as A, then the validity of the EPD requires checking (see PCT/GL/ISPE/12 para 17.29).

Validation of the right of priority requires the following:

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

If it is determined that

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 and the international filing date has been determined using Rule 80.5)

AND

ii. a Restoration of Right of Priority under PCT Rule 26.3bis:

a. (see 7.11 Extensions of Time and Restoration of the Right of Priority),:

HAS NOT been requested OR priority granted
then the checkbox at item 2 must be marked.

b. HAS BEEN requested AND granted,
then this must be noted at item 3.
and the opinion should proceed on the basis that the priority claim is valid.

c. HAS BEEN requested, but has NOT YET been determined,
then this must be noted at item 3, including the following comment:

“The applicant has requested a restoration of right of priority under Rule 26bis.3 which is yet to be determined.”

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

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.

In order to be able to do this, the examiner should:

where the priority document is an Australian document (e.g. AU provisional), view the document on PAMS;
where the priority document is a foreign document (this will most likely be the case when the application was originally filed with RO/NZ) and it is not already in the file, examiners should first check whether the document is available from PatentScope. If the document is present, a copy should be downloaded and placed in the case file. 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 (i.e 3 months to establish ISR/ISO) require the issuance of an opinion before the priority document has been obtained, then, in the case of an ISO, the ISO should be issued with the checkbox at item 1 of Box II marked without waiting to obtain the priority document. In the case of an IPEO an appropriate comment should be made under the heading "Additional observations, if necessary:" in item 3 of Box II of the IPEO.
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 and this is to be indicated in the IPRPII. [Rule 66.7 Ad. Inst. 421]

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, and the checkbox at item 2 of Box II of the ISO, IPEO or IPRPII must be marked (see PCT/GL/ISPE/12 at para 17.28 to 17.30 Rule 64.1). 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 1: "Additional observations" relate to priority considerations only and not to clarity, descriptive support, defects or any other consideration relevant to Box VIII.

Note 2: Partial Priorities:

Where

the right to priority is assessed as above and is found to be valid, but
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,

then
(i) these claims or embodiments are to be attributed, for the purposes of assessment of novelty and inventive step, the priority date of the oldest priority document that does disclose the embodiment claimed, or the filing date of the international application, as appropriate, and
(ii) 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 and the citations discussed 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 the priority document is an AU complete application which itself is associated with an AU provisional and 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 an "E", "L" or "P" document.

Amended Reasons

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