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Priority of an invention or utility model. What is it? Which types of it exist and why do we need it?

June 15, 2020


More and more often, our clients, having heard the term “priority” in negotiations and consultations with them, ask a question - what is it and why is it needed.
So, let's start with the definition, the priority of the industrial property is the primacy in time, established in accordance with the patent law of the country. Priority in patent law is a right arising for a limited period of time, which begins with the first filing of an application for a patent.
Priority allows you to determine the primacy of the applicant and gives him an advantage in obtaining a patent over other persons who declared the created intellectual property object later. It is priority that is the “reference point” that fixes the date against which the patentability of an industrial property will be determined. This is a particular priority. The moment of establishing the priority is extremely important for the applicant to obtain security documents for industrial property objects during the examination of patentability applications, since the level of technology is determined precisely on the priority date.
But what is the priority date? The priority date is the date on which (subject to the receipt of a patent) the countdown of the patent or exclusive rights will begin. Often there are times when several people wish to receive a title of protection for the same intellectual property. As you know, a patent for the same solution can be obtained only once in the world. Obviously, there should not be a situation in which several people will have patents for the same thing, for example, an invention. Only one patent can be granted per invention. In this regard, countries use the principle of the first filing of an application, according to which the patent for an intellectual property is received by the person who first filed the application for a patent. It is the filing date of the first application that is considered the “priority date”.
If someone filed the application later in time, he will either be refused a patent or the decision will not be issued until the prosecution on the application filed earlier is completed. And it is precisely the priority date that this moment is fixed.
It often happens that many people are simultaneously working on a solution (solutions) to a specific technical problem. However, only one of them can be granted a patent for the same invention and many countries follow the principle of the so-called first filing system, when the patent is granted to the person who first filed the application. If you are applying for patent protection for the same invention in several countries, the principle of priority is very useful since you do not need to file your application in several countries at the same time. The Paris Convention for the Protection of Industrial Property stipulates that after you have filed an application in one of the countries party to the Convention, you have the right to claim priority for a period of 12 months and the filing date of this first application is considered a “priority date”. Therefore, when you apply for protection in other Member States (the Paris Convention) during these twelve months, the filing date of your first application is considered to have a “priority” compared to other applications filed after this date. In this case, you will still be considered as the first person to file an application in other Member States, even if there are other applications filed before the filing date of your application in these countries.

This is what patent law tells us about priority.
According to Article 1381 of the Civil Code of the Russian Federation:
1. The priority of an invention, utility model or industrial design shall be established by the date of filing with the federal executive body for intellectual property an application for an invention, utility model or industrial design, in other words, as soon as you have filed an application with the Patent Office, you have secured the right to superiority and from this date, the start of the patent and your rights will be estimated.
2. The priority of an invention, utility model or industrial design may be established by the date of receipt of additional materials, if they are drawn up by the applicant as an independent application, which is filed before the expiration of three months from the date of receipt by the applicant of a notice from the federal executive authority on intellectual property about the impossibility to accept attention to additional materials in connection with their recognition of changing the essence of the declared decision, and provided that at the filing date of such an independent application, an application containing the specified additional materials has not been withdrawn and is not recognized as withdrawn. This rule should be understood so that if there are deficiencies in the description of your technical solution, it is not disclosed with sufficient completeness for its implementation, does not contain all the necessary data, then this information can be additionally provided, but the primacy will be lost and the priority will be established by date of receipt of additional materials. This is a very important point and this must be taken into account. In order to exclude the possibility of establishing priority later, you need to contact qualified patent specialists who will help provide information about your decision in the required form and scope to establish priority by the date of filing of the application with the patent office.
3. The priority of an invention, utility model or industrial design may be established by the date of filing by the same applicant of the earlier application disclosing the invention, utility model or industrial design by the same federal executive authority for intellectual property, provided that the earlier application is not withdrawn, was not recognized as withdrawn and the state registration of an invention, utility model or industrial design in the corresponding register did not take place on the filing date of the application in which priority is claimed, while the application for the invention in which the priority is claimed is filed within twelve months from the date of filing an earlier application, and an application for a utility model or industrial design - within six months from the date of filing an earlier application.
When filing an application in which priority is claimed, an earlier application is recognized as withdrawn. Priority cannot be established by the filing date of an application in which an earlier priority has already been claimed.
4. The priority of an invention, utility model or industrial design for the selected application shall be established by the date of filing by the same applicant with the federal executive authority for intellectual property of the initial application disclosing the invention, utility model or industrial design, and if there is a right to establish an earlier priority on the initial application - on the date of this priority, provided that on the filing date of the highlighted application, the initial application for an invention, utility model or industrial design has not been withdrawn and recognized as withdrawn and the highlighted application has been filed before the opportunity provided that this Code to file an objection to a decision has been exhausted on refusal to grant a patent at the initial application, or until the date of registration of an invention, utility model or industrial design, if a decision was made on the grant of a patent on the initial application.
5. The priority of an invention, utility model or industrial design may be established on the basis of several previously filed applications or additional materials thereto, subject to the conditions provided for in paragraphs 2, 3 and 4, respectively.
There is a concept of “convention priority”. As the name of this priority implies, it must be relevant to some convention. For clarification, we turn to article 1382 of the Civil Code of the Russian Federation, according to which:

1. The priority of an invention, utility model can be established by the filing date of the first application for an invention, utility model or industrial design in a state party to the Paris Convention for the Protection of Industrial Property (convention priority), subject to filing with the federal executive authority for intellectual property an application for an invention or utility model within twelve months from the specified date. If due to circumstances beyond the control of the applicant, the application for claiming the convention priority could not be submitted within the specified time period, this period may be extended by the federal executive authority for intellectual property, but no longer than two months.

2. An applicant wishing to use the right of conventional priority in relation to an application for an invention or utility model must inform the federal executive authority for intellectual property about this and submit to this federal authority a certified copy of the first application within sixteen months from the date of its filing in the patent Office of the State Party to the Paris Convention for the Protection of Industrial Property.
If a certified copy of the first application is not submitted within the specified period, the priority right can nevertheless be recognized by the federal executive authority for intellectual property at the request of the applicant submitted to this federal authority before the expiration of the specified period, provided that a copy of the first application is requested by the applicant in the patent agency to which the first application is submitted, within fourteen months from the date of filing the first application and submitted to the federal executive authority for intellectual property within two months from the date of its receipt by the applicant.
It should be noted that the Federal Executive Body for Intellectual Property has the right to require the applicant to submit a translation into Russian of the first application for an invention or utility model only if the verification of the claim to priority of the invention or utility model is associated with establishing the patentability of the claimed invention or utility model.
Thus, priority is an important tool in establishing the primacy and fixing it, and the priority date is important for assessing the patentability of your technical solution and the sooner you submit an application, the more chances you have to get exclusive rights to your development.
 

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Author of article

Olga Dolgikh

Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer