Paris Convention

2.1 Paris Convention

The most important part of the Paris Convention for the purposes of FD1 is Article 4, which lays out the minimum requirements for recognising priority amongst Paris Convention states, and hence PCT, EP and UK priority claims. The relevant parts are:

Article 4 Right of Priority

A(1)(2) Anyone can claim priority from their regular national filing in a convention state of a patent, utility model, industrial design or trade mark. (3) A ‘regular national filing’ means a filing sufficient to obtain a filing date, irrespective of what then happens to that application. B A subsequent filing claiming the priority will not be invalidated by any intervening publication, exploitation or other act that might otherwise do so. C(1)(2) Patents and utility models can claim 12 months priority, and industrial designs and trade marks can claim six months, each from the date of filing of the first application. (3) The above periods extend to the next working day if the relevant filing office is not open. (4) A subsequent national filing for the same matter can be treated as the first application if: – it is filed in the same country as the previous application, and – the previous application is withdrawn / abandoned / refused… – without publication, – leaving no rights outstanding, – without itself having served as a basis of priority, and – before the subsequent filing; and the previous application may not subsequently also be used as a basis of priority. D(1) To obtain priority, you must make a declaration stating the date of filing of the first application and the country it was made in. (3) You may then be required to supply a certified copy of the first application (and a translation if needed) within three months. E(1)(2) You can file a patent claiming priority from a utility model within 12 months, and vice versa. However, if you file an industrial design claiming priority from a utility model, you only get the industrial design’s six-month priority period. F Multiple priorities are allowed. G Divisional applications inherit their parent’s priority date. H Priority is based on the first application as a whole, not just on its claims.