8: Stopping the Clock – You and your Priority Right

Note: This is the eighth in a series on IP for Startups. To view previous articles please click here.

What’s a Priority Right? Last time out (in Tip # 7), right at the end, we mentioned establishing a Priority Right. It basically means that whoever files the first patent application for a specific invention, in almost any country in the World, on a specific date, is able to claim that filing date in almost any other country in the World, even if they file their application up to one year after that filing date. This is in accordance with The Paris Convention for the Protection of Industrial Property; information about the Convention can be found here.

How does my application establish ‘Priority Rights?’ It’s automatic, as long as the Patent Office where you filed your application is in one of the 177 countries that is a member of the ‘Paris Convention.’ (That’s almost every country in the World, and yes, it includes Israel).

So how does “The Paris Convention” work?

  1. You have 12 months from the date that you file your first application to file another application for the same invention, in one or more other countries (the “additional” countries).
  2. All countries, both where you filed the first application and the additional countries, must be members of the Paris Convention.
  3. The way that the invention is described in the applications in the additional countries must be substantially the same as in your first application.
  4. A priority claim for a specific invention can only be made from a single first application. In other words, you can’t file a first application, for example, in Israel, on January 1, 2017; then file another application claiming priority from the Israel application, for example, in the United States on January 1, 2018; and then file another application claiming priority from the US application, for example, in Australia on January 1, 2019. That second priority claim is invalid.

So how does claiming priority actually help?

  • It gives you the ability to file a patent application in most countries up to one year after the date when you filed your first application, and to get a filing date which is earlier than everyone else who may have filed in those countries before the date that you actually filed (in those countries), as long as they filed after your priority date.

Let’s consider the following series of events:

  1. June 1, 2017 – you filed your first (priority) application in the US.
  2. August 1, 2017 – a Chinese company filed its application for the same invention in China.
  3. June 1, 2018 – you filed in China, claiming priority from your US application.

If the invention is patentable in China, the patent will be yours, even though your application was actually filed 11 months after the Chinese company’s application. That’s the power of the priority right!

  • An additional advantage of the priority right is connected with prior publication, disclosure and prior art (see tip no. 2 on disclosure and tip no. 5 on patent searches). The patentability of your invention depends on the existence (or not) of information about your invention or similar inventions before the date on which you file your patent application.

The effect of having a single patent application which establishes a priority right which can be claimed in almost every country in the World, as above, is also to stop the clock when it comes to publication and other potential prior art.

In other words, once you have filed your first patent application, let’s say, on February 14th 2018, if you file applications in additional countries by February 14th 2019, and claim priority from your first application, no publications of your invention or of similar inventions, whether by you or by others, can be taken into account by those other Patent Offices to reject your application based on prior art.

You’ve basically stopped the clock! And that, is a big deal!

Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!