Multiple Priorities and Partial Priority

1Section 11 of the Patents Act deals with priority of applications and specifically provides for determining the priority in the case of single application, multiple application, previous application and division application. Rules 19(4) and 21 of Patents Rules 2003 deal with filing of priority documents.

2Ordinarily, a complete specification is filed within 12 to 15 months from the date of filing of the provisional specification. (Patents Act 1970, s 9(1).) If the complete specification is not filed within the stipulated time the application shall be treated as abandoned. Where a complete specification is filed in pursuance of a single application which is accompanied by a provisional specification or a specification treated as a provisional specification under s 9(3), the priority date of the claim shall be the date of filing of the provisional specification. For the complete specification to get the benefit of the priority date of the provisional specification, the claim in the complete specification should be fairly based on the matter disclosed in the provisional specification.

3A claim has to be based on an earlier provisional specification so as to get the benefit of the earlier priority date. The key ingredient is determining the date of priority is the disclosure of matter in the specification. Any subsequent claim of a complete specification which seeks to get the benefit of an earlier priority date should be fairly based on the matter disclosed in the earlier provisional specification. In a case where the complete specification is filed pursuant to two or more applications containing provisional specifications, and the claim is fairly based on the matter disclosed in one of the provisional specifications, the priority date of the claim shall be the date of filing of the application along with such provisional specification. The crucial aspect for determining the priority is to ascertain the document in which the matter was completely and fully disclosed. In cases where matter is disclosed partly in one provisional specification and partly in another, the priority date of the claim shall be the date of filing of the latter provisional specification.

4If the complete specification is based on a previously filed application in India and has been filed within 12 months from the date of that application, the priority date of the claim in the complete specification shall be the date of the previously filed application in which the matter was first disclosed, provided that the claim in the complete specification be fairly based on the matter disclosed in the previously filed application. (Ibid, s 11(3A).)

5An applicant may file a further application in respect of an invention disclosed in the provisional or complete specification already filed requiring the division of the earlier application. Such further application may be filed by the applicant, on its own volition or with a view to correct the objection raised by the Controller that the claim of the complete specification relates to more than one invention. (Patents Act 1970, s 16.) The priority date of the claim in respect of the complete specification filed in pursuance of such further application shall be the date of filing of the specification in which the matter was first disclosed. (Ibid, s 11(4).) Needless to say, the claim should be fairly based on the matter disclosed in any of the earlier provisional or complete specifications.

6In the case of multiple applications filed in one or more convention countries for inventions which are closely related so as to constitute one invention, one application may be made within 12 months from the date on which the first application was made in respect of the inventions disclosed in the specifications which accompanied the basic applications. (Patents Act 1970, s 137(1).) Where the complete specification is based on matter disclosed in more than one application made in one or more convention countries, the priority date of the claim of such specification is the date on which the matter was first disclosed. (Ibid, s 137(2).)

7A matter shall be deemed to have been disclosed in a basic application for protection in a convention country if it was claimed or disclosed in that application or any documents submitted in support of that application. However, such disclosure will not include matters disclosed by way of a disclaimer or acknowledgement of a prior art. In the case of disclosure by documents, the disclosure will be effective only if a copy of the document in filed at the Patent Office with the convention application. (Ibid, s 137(3).)

8If the matter claimed in the convention application is already claimed in an application in the convention country filed prior to the basic application, the application will be proceeded only on abandonment of the claim to convention priority or suitable amendment of the claims. (Engel and Anderson's Application (1978) RPC 608, p 616.) For claiming priority on the basis of an application filed in a convention country, it is essential that the application should exist as on the date of filing the application in India. If the basic application is withdrawn before filing the application in India, no convention priority can be claimed.