Contact

RESOURCES

Novelty

Priority dates

3.79 Section 17 of the Act sets out the relevant considerations for priority:

(1) For the purposes of this Act, the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in the application is, except as provided by the provisions of this Act, the date of filing the application.

(2) Where in or in connection with an application for a patent (referred to in this section as the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of the rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his, and the application in suit has a date of filing, within the period referred to in subsection (2A) (a) or (b), then

(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall, instead of being the date of filing the application in suit, be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them; and

(b) the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.

3.80 Section 17(2) therefore permits the applicant to specify one or more earlier relevant applications for the purposes of establishing the priority date of the invention to which an application for a patent relates. Section 17(5) further specifies that a “relevant application” may refer to:

(a) an application for a patent under this Act; or

(b) an application in or for a convention country for protection in respect of an invention or an application which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application.

3.81 Hence, Section 17(5) prescribes the kinds of applications that may serve as the basis of a valid priority claim under Section 17(2). Notably, what constitutes “protection in respect of an invention” is not specified in the Act; however it is likely that an application for a patent (in a convention country) would fall under such a definition and hence be considered a relevant application. In addition, an application for the registration of a utility model (e.g. German Gebrauchsmuster), for a utility certificate or for an inventor’s certificate would each appear to be a relevant application so long as the laws of the respective countries in which they are applied indicate that said application is for protecting an invention. For example, a US provisional patent application would also be considered as a relevant application. However, an application for a registered design is not a relevant application (Agfa Gevaert AG’s Application [1982] RPC 441).

3.82 In order for the invention in an application to be accorded its claimed priority date, Section 17(2) further prescribes that said invention must be supported by matter disclosed in the earlier relevant application or applications that are the subject of the priority claim. The test for deciding whether an invention is supported and sufficiently described by matter disclosed in an earlier application is basically the same as that for deciding whether a claim of a specification is supported and sufficiently described by the description (see Section J and Section K in Chapter 5).

3.83 Since Section 17(2) permits the applicant to specifiy one or more earlier relevant applications for the purposes of priority claims, it is therefore possible for the claims in the application under examination to have different priority dates, depending on the filing date of each of the earlier relevant applications. The priority date of a feature or combination of features, as defined in a particular claim, is the filing date of the earliest application whose disclosure supports that feature or combination.

3.84 Examiners should exercise caution when dealing with applications claiming priority from multiple earlier relevant applications with different filing dates. For such applications, a prior disclosure occurring after the earliest claimed priority date may still be relevant for both novelty and inventive step for claims that are accorded a priority date that is later than the earliest claimed priority date. The aforementioned principle was illustrated in G 3/93 Priority interval, which provided the following example:

3-82

– On 1 January 1990, an applicant files an application P1 containing the elements A + B;

– On 1 February 1990, a document D is published containing the elements A + B;

– On 1 March 1990, the same applicant files an application P2 containing the elements A + B + C;

– On 1 June 1990, the same applicant files a European patent application with Claim 1 containing the elements A + B, and Claim 2 containing the elements A + B + C; priority is claimed from P1 and P2;

3.85 The Enlarged Board of Appeal stated that claim 2 in the European patent application cannot derive prority from application P1, since P1 and claim 2 do not concern the same invention. Therefore, claim 1 would be accorded the priority date of P1, whereas claim 2 would only be accorded the priority date of application P2, which is later than the publication date of document D. As a concequence, D forms part of the state of the art in respect of claim 2, and is citable against claim 2. Under the same circumstances, document D would analoguously form part of the state of the art in respect of claim 2 should said claim have been filed in a Singapore patent application since the combination of A + B + C is only supported by P2, and would hence be accorded the priority date of P2.

3.86 As stated in Section 17(2A), for the purposes of a priority claim, the application in suit may be filed in the the period of 12 months immediately following the date of filing of the specified earlier relevant application or, if there is more than one relevant application, the earliest of them. Sections 17(2B)-(2D) indicate certain exceptions in respect of the aforementioned period.

3.87 Section 17(3) further prescribes that:

Where an invention or other matter contained in the application in suit was also disclosed in 2 earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of his and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications shall, so far as it concerns that invention or matter, be disregarded unless —

a) it was filed in or in respect of the same country as the first; and

b) not later than the date of filing the second, the first (whether or not so specified) was unconditionally withdrawn, or was abandoned or refused, without —

(i) having been made available to the public whether in Singapore or elsewhere;

(ii) leaving any right outstanding; and

(iii) having served to establish a priority date in relation to another application, wherever made.

3.88 Section 17(3) deals with the situation where two (or more) earlier relevant applications both contain the subject matter of the application in suit. The effect of this subsection is that, in most circumstances, a valid priority claim may only be made to the first (or earliest) relevant application by the same applicant containing that matter. Notably, a relevant application in the context of Section 17(3), is the same as that described in paragraphs 3.80 and 3.81 above. However, the subsection also provides an exception to that position by which the applicant may validly claim priority to a second (or subsequent) earlier relevant application. This exception only applies when certain specific conditions have been met.

3.89 In particular, an applicant who files, in the same country, a second application and wants to use it for priority purposes must therefore ensure that the first application has not been published or used to form the basis of a priority claim. He must also ensure that, at the time of filing the second application, the first application has been unconditionally withdrawn, abandoned or refused “without leaving any rights outstanding”. Such outstanding rights may include the right to request for an extension of time limits under Rule 108. In order for a priority claim to the second application to be valid, the applicant therefore needs to ensure that any such outstanding rights on the first application have explicitly been given up before or on the date of filing of the second application. Withdrawing the first application and filing a second application while meeting these conditions is often referred to as “regenerating the priority date”.

3.90 If the conditions for regenerating the priority date have not been met, and the application in suit is filed too late to use the first application as a basis for claiming priority (Section 17(2A)), then the application in suit will not be able to use either the first or the second application as a basis for claiming priority of the subject matter in question. The effect is that the priority date of that subject matter is the date of filing of the application in suit. If either of the earlier (first or second) applications has been published, then that disclosure will also form part of the state of the art with respect to the application in suit.

3.91 In summary, for the application in suit to make a valid priority claim to an earlier relevant application, the following conditions must be satisfied:

(i) the earlier relevant application that is the subject of the priority claim must be referred to in paragraphs 3.80 and 3.81 (Sections 17(2) and 17(5));

(ii) the earlier relevant application must be filed by the same applicant or a predecessor in title of his (Section 17(2));

(iii) the invention to which the application in suit relates must be supported by matter disclosed in the earlier relevant application (Section 17(2));

(iv) the application in suit must be filed in the period of 12 months immediately following the date of filing of the earlier relevant application (Section 17(2A), subject to certain exceptions in Sections 17(2B)-(2D)); and

(v) the earlier relevant application must have been the first (earliest) application containing the same subject matter as that in the application in suit (Section 17(3)).

3.92 During the search process, Examiners should identify as far as possible, all relevant prior art immediately before the date of filing of a patent application, regardless of whether there is a priority declaration made in the patent application.

3.93 During the examination process, the Examiner will generally not investigate the validity of the priority claim. However, the Examiner shall do so when: i) there is a potential prior art that is published on or after the priority date but before the date of filing of the application under examination; or ii) there is a prior application that is potentially relevant under Section 14(3) whose priority date is on or after the priority date but before the date of filing of the application under examination.

3.94 In addition, particular care should also be taken when the Examiner discovers a potentially relevant disclosure that is an application made by the same applicant (or his predecessor in title) with an earlier priority date or date of filing, and is not the priority document of the application under examination. In such an instance, the validity of the priority claim of the application under examination may be called into question under Sections 17(2) and 17(3) since, prima facie, the priority document is not the earliest application containing the same subject matter as that in the application under examination.

3.95 In Singapore, priority documents are not furnished by the applicants as a matter of course in all cases. They are to be furnished by the applicants when the Examiner informs the Registrar of the need. However, the Examiner should exhaust all readily available avenues first, including databases such as Patentscope, the European Patent Register and USPTO Public PAIR, prior to requesting documents through the Registry.

3.96 Likewise, in the case of non-English priority documents, Rule 9C states that translations need to be furnished only when required and where the validity of the claim to priority is relevant to determining whether the invention concerned is patentable.