Newsletter
IPO PRACTICE FOR REVIEW OF PRIORITY CLAIMS
On 10 May 2006, the Intellectual Property Office (IPO) issued an announcement to explain the provisions of the Patent Procedural Examination Guidelines with Regard to Priority Claims. The announcement is summarized as follows:
Paragraph 1, Article 28 and Paragraph 7, Ar-ticle 29 of the Patent Act provide that a patent applicant seeking a priority claim must make a declaration at the time of filing his (her) patent application, and must expressly state the pri-ority claim in the written application. The term "must make a declaration at the time of patent filing" means that at the time of filing the patent application, the applicant must state in the written application with respect to its priority claim. Based on the doctrine of bal-ance of interests, Article 9 of the Administra-tive Procedures Act requires administrative agencies to consider both the advantages and the disadvantages caused to parties by ad-ministrative procedures.
If the content disclosed in the application document as submitted at the time of filing is objectively sufficient to confirm that the ap-plicant has claimed priority, the IPO should conclude that the applicant has claimed prior-ity in accordance with the Patent Act.
For example: if an applicant does not tick the "priority claim" box in the "declarations" sec-tion of the written application, but lists details of the basis for the priority claim; or an ap-plicant ticks the box but lists no details; or the applicant neither ticks the box nor lists details in the "declarations" section, but indicates in the "appended documents" section that it claims priority, the IPO should conclude that the applicant has duly claimed priority. If the applicant has failed to state the date, country, and/or filing number of the corresponding foreign application, such missing information can be provided later. But if the applicant fails to provide such information before the dead-line set by the IPO, the priority claim will not be accepted.
If an applicant states in its patent specification that it wishes to claim priority, but makes no indication whatsoever of a priority claim in the written application, it will not be deemed as having claimed priority at the time of patent filing.