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CHAPTER V: Priority |
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Art.4,
4bis |
The Philippines being a signatory state of the Paris Convention, Art.4 and Art.4bis thereof do also apply in the Philippines |
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Sec.40 |
1.1 A Philippine patent application is accorded as its date of filing the date on which it satisfies the requirements of Sec.40 and Rule 600. This date remains unchanged except in the special circumstances referred to in Sec.41 and Rules 600.1 to 602. |
| Sec.29 |
The
date of filing may be the only effective date of the application. It will
be of importance for fixing the expiry of certain time limits, for
determining the state of the art relevant to the novelty or obviousness of
the subject-matter of the application, and for determining, in accordance
with Sec.29 and R.304, which of two or more Philippine applications from
independent persons for the same invention is to proceed to grant. |
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Sec.31
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1.2 However, in many cases, a Philippine application will claim the right of priority of the date of filing of an earlier application. In such cases, it is the priority date (i.e. the date of filing of the earlier application) which becomes the effective date for the purposes mentioned in the preceding paragraph, except for the fixing of certain time limits |
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Sec.31
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1.3
For a valid
claim to priority, the earlier application whose priority has been claimed
must have been made by the applicant, it must have been made in (or for)
another country which by treaty, convention or law affords similar
privileges to Filipino citizens (e.g. a signatory state of the Paris
Convention), and
the following conditions must also be satisfied: (a)
the local
application must expressly claim priority, (b)
it must be
filed within twelve (12) months from the date the earliest foreign
application was filed, and (c)
a certified
copy of the foreign application together with an English translation must
be filed within six (6) months from the date of filing in the Philippines. Pursuant
to Rule 305, the six months period may be extended by the Director for a
maximum of six months upon showing of good cause or in compliance with
treaties to which the Philippines are or may become a member. The
words "in (or for) another country which…“ mean that priority may
be claimed
of an earlier national regional or international application. The earlier
application may be for a patent or for the registration of a utility model
or for a utility certificate or for an inventor's certificate. As long as
the contents of the earlier application were sufficient to establish a
regular filing date, it can be used to create a priority date, no matter
what the outcome of the application may later be; for example, it may
subsequently be abandoned or refused. |
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Art.4C(2)
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1.4
Normally (except as explained in V, 1.4a here below) the filing
date of the "first application" must be claimed as a priority,
i.e. the application disclosing for the first time any or all of the
subject-matter of the Philippines application. If it is found that the
application to which the priority claim is directed is in fact not the
first application in the above sense, but some or all of the
subject-matter was disclosed in a still earlier application in or for the
same country and originating from the same inventor, the priority claim is
invalid as far as the subject-matter was already disclosed in the still
earlier application. |
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Sec.24.1
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To
the extent the priority claim is invalid, the effective filing date of the
local application under examination is the date of its filing in the
Philippines. The previously disclosed subject-matter of the local
application is not novel, if the still earlier application referred to
above was published prior to the effective filing date of the local
application (Sec.24.1) or if the still earlier application is also a
Philippines application which was published on or after the effective
filing date of the local application in question (Sec.24.2), provided the
inventor or applicant identified in both the applications are not one and
the same. |
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Art.4C(4) Paris Convention |
1.4a
A subsequent application for the same subject-matter and filed in
or for the same state shall be considered as the first application for
priority purposes if, at the date this subsequent application was filed,
the first application had been withdrawn, abandoned or refused, without
being open to public inspection and without leaving any rights
outstanding, and had not served as a basis for claiming priority. The
Office will not consider this question unless there is evidence of the
existence of an earlier application as, for example, in the case of a
United States continuation-in-part application. Where it is clear that an
earlier application for the same subject-matter exists, and where the
priority right is important because of intervening prior art (see V, 2.1
here below), the applicant should be required to establish by evidence
from an appropriate authority (normally a national patent office) that
there were no rights outstanding of the in the earlier application in
respect of the subject-matter of the application being examined. If the
earlier application has been published, or it has been used for priority
purposes in another application, there are clearly rights outstanding. |
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R.306.1 R.306.2 |
1.5
Multiple priorities from different countries may be claimed - i.e.
a Philippines application may claim rights of priority based on more than
one earlier application. The earlier application may have been filed in or
for the same
or different states, but in all cases the earliest application must have
been filed not more than 12 months before the date of filing of the
Philippines application. If more than one priority is claimed, time limits will be computed from the priority date will be based on the earliest priority date. |
| R.306.3 |
An
element of a Philippines application will be accorded the priority date of
the earliest priority application which discloses it. If, for instance,
the Philippines application describes and claims two embodiments (A and B)
of an invention, A being disclosed in a French application and B in a
German application, both filed within the preceding 12 months, the
priority dates of both the French and German applications may be claimed
for the appropriate parts of the Philippines application; embodiment A
will have the French priority date, and embodiment B the German priority
date, as effective filing dates. If embodiments A and B are claimed as
alternatives in one claim, these alternatives will likewise have the
different priority dates as effective dates. If, on the other hand, a
Philippines application is based on one earlier application disclosing a
feature C and a second earlier application disclosing a feature D, neither
disclosing the combination of C and D, a claim to that combination will be
entitled only to the date of filing of the Philippine application under
examination itself. In other words, it is not permitted to mosaic priority
documents. An exception might arise where one priority document contains a
reference to the other and explicitly states that features from the two
documents can be combined in a particular manner.
2.1
As a general rule, the examiner should not make any investigation
as to the validity of a right to priority. However, the priority right
assumes importance if prior art has to be taken into account, which has
been made available to the public within the meaning of Sec.24.1, on or
after the priority date claimed and before the date of the local filing (e.g.
an intermediate document, see IV, 5.3, or if the content of the Philippine
patent application is totally or partially identical with the content of
another Philippine application from a different applicant or inventor
within the meaning of Sec.24.2, such other application claiming a priority
date within that period. In such cases, (i.e. cases where the art in
question would be relevant if of earlier date) the examiner must
investigate whether the priority date(s) claimed may be accorded to the
appropriate parts of the application he is examining and should inform the
applicant of the outcome and whether, in consequence, the particular prior
art under consideration, e.g. the intermediate document, or the other
Philippine application forms part of the state of the art within the
meaning of Sec.24. Also,
in the case of possible conflict with another Philippine application under
Sec.24.2, it may be necessary in addition to allocate priority dates to
the appropriate parts of that other application and to communicate this to the
applicant analogously. In the
case of conflicting local applications, the examiner can only take action
once the earlier local application has been published. |
| R.306.3 |
2.2
When the examiner needs to consider the question of priority date,
he should bear in mind all the matters which are mentioned in V, 1.3 to
1.5 above. He should also remember that, to establish a priority date, it
is not necessary that the elements of the invention for which priority is
claimed should be found among any claims in the previous application. It
is sufficient that the documents of the previous application taken as a
whole "specifically disclose" such elements. The description and
any claims or drawings of the previous application should, therefore, be
considered as a whole in deciding this question, except that account
should not be taken of subject-matter found solely in that part of the
description referring to prior art, or in an explicit disclaimer. 2.3
The requirement that the disclosure must be specific means that it
is not sufficient if the elements in question are merely referred to in
broad and general terms. A claim to a detailed embodiment of a certain
feature would not be entitled to priority on the basis of a mere general
reference to that feature in a priority document. Exact correspondence is
not required, however. It is enough that, on a reasonable assessment,
there is in substance a disclosure of all the elements of the claim. 2.4
The basic test to determine whether a claim is entitled to the date
of a priority document is the same as the test of whether an amendment to
an application satisfies the requirement of the proviso in Sec.49 (see
also VI, 5.4). That is to say for the priority date to be allowed, the
subject-matter of the claim must be derivable directly and unambiguously
from the disclosure of the invention in the priority document, when
account is taken of any features implicit to a person skilled in the art
in what is expressly mentioned in the document. As
an example of an implicit disclosure, a claim to apparatus including
"releasable fastening means" would be entitled to the priority
date of a disclosure of that apparatus in which the relevant fastening
element was, say, a nut and bolt, or a spring catch or a toggle-operated
latch, provided the general concept of "releasable" is implicit
in the disclosure of such element. 2.5
If the tests set out in V, 2.2 to 2.4 here above are not satisfied
in relation to a particular earlier application, then the effective date
of the claim (or one of the embodiments claimed) will either be the filing
date of the earliest application which does provide the required
disclosure and of which the priority is validly claimed or, in the absence
of such, will be the date of filing of the Philippine application itself
(or the new date of filing if the application has been re-dated under
Sec.41). 2.6
Some examples of determining priority dates Note:
the dates used are merely illustrative; they do not take account of the
fact that filing may not be possible on weekends and public holidays.
2.6.1
Intermediate publication of the contents of the priority
application: P
is the application from which priority is claimed by the PH application, D
is the disclosure of the subject-matter of P.
01.01.90
01.05.90
01.06.90 filing
publication filing P
D
PH D
is state of the art under Sec.24.1 when the priority claim of P is not
valid. 2.6.2
Intermediate publication of another Philippine application: P1
is the application from which priority is claimed by PH1, P2 the one from
which PH2 claims priority. PH1 and PH2 are filed by different applicants. 01.02.89
01.01.90
01.02.90 01.08.90
01.01.91 filing
filing filing
publication
filing P1
P2 PH1 PH1
PH2 A
+ B
A + B A
+ B
A + B
A + B PH1
is state of the art for PH2 under Sec.24.2 when the respective priority
claims of P1 and P2 are valid. This does not change if the publication of
PH1 takes place after the filing date of PH2. The
publication of PH1 is state of the art under Sec.24.1 if the priority
claim of P2 is not valid. 2.6.3
Multiple priorities claimed for different inventions in the
application, with an intermediate publication of one of the inventions.
PH
claims priority of P1 and P2, D is the disclosure of A+B. 01.01.90
01.2.90
01.03.90
01.06.90 filing
publication filing
filing P1
D
P2
PH A
+ B
A + B
A + B + C
Claim 1: A + B
Claim 2: A + B + C Claim
1 has a valid priority of P1 for its subject-matter, thus publication D is
not state of the art under Sec.24.1 against this claim. Claim 2 cannot
benefit from the priority of P1, as it does not concern the same subject- matter.
Thus publication D is state of the art under Sec.24.1 for this claim. It
is immaterial whether claim 2 is in the form of a dependent or an
independent claim. 2.6.4
A situation in which it has to be checked whether the application
from which priority is actually claimed is the "first
application" in the sense of Art.4 C. (1) and (4) of the Paris
Convention: P1
is the earliest application of the same applicant containing the
invention. PH claims the priority of the later US-application P2, which is
a “continuation-in-part" of P1. D is a public disclosure of A+B. 01.07.89 01.01.90
01.06.90 01.12.90 filing
filing
publication
filing P1
P2 (cip)
D
PH A
+ B A
+ B
A + B
claim 1: A + B
A + B + C claim
2: A + B + C The
priority claim of P2 for claim 1 is not valid as P2 is not the "first
application" for this subject-matter in the sense of Art.4 C. (1) and
(4) of the Paris Convention, but P1, which has "left rights
outstanding" in that P2 is a "continuation-in-part"
thereof. Therefore Art.4 C. (4) of the Paris Convention does not apply and
this is not altered by an abandonment, withdrawal, refusal or
non-publication of P1. D
is prior art pursuant to Sec.24.1 against claim 1, but not against claim
2, as the latter claim has the earlier priority of P2. |
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Sec.31 |
3.1
An applicant who wishes to claim priority must file a declaration
of priority giving particulars of the previous filing, as specified in
Sec.31 and Rules 305 and 307, together with a certified copy of the
previous application, and if necessary a translation of it into English |
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Sec.31
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3.2 At least the date and state of any filing from which priority is claimed must be stated at the time of filing the local application and the file number of the priority application must be indicated during formality examination. The certified copy of the priority document, together with a translation into English, if necessary, must be filed within 6 months of the priority date, which period may be extended for a maximum of 6 months under special circumstances. Where
the earlier application is an international application, the name of the
state(s) for which it was filed must be stated. 3.3
If the required translation or declaration is not filed within the time
limit, the right of priority is lost for the Philippine patent
application. |