Priority Rights in IP

The priority right (or “right of priority”) for an intellectual property right, such as a patent, industrial design, or trademark, enables an applicant for the IP right to file an application in another country and have an effective date of filing which is identical to the date of the first filing in the first country. This priority right is time-limited and is initially triggered by the first filing of the IP right. The applicant has then 6 months to file the application for registration of a design or a trademark in other countries or 12 months to request grant of the patent.

The initial date of filing is called the “priority date”. The effect of claiming the priority for the later applications is that the effective date of filing for the later applications is “backdated” to this priority date. The subsequent examination of the patent, for example, ignores all prior art published after the priority date.

The priority right can only be for the same invention, design, or trademark. It does not cover subsequent improvements or embodiments of the invention, even if these are included in the later application. For example, it is possible to update a patent specification with new examples or to add a discussion about additional prior art references. This new text will not benefit from the “back-dating” of the application and will have a filing date of the later application. The original text will continue to enjoy the back-dated priority date. 

The applicant must claim the priority in its later application if it wants to benefit from the date of the first filing of the initial application. This right of priority belongs only to the initial applicant or to their so-called “successor-in-title”, such as the purchaser of a patent. Any contract assigning an intellectual property right should also include the transfer of the right of priority, as there will otherwise be the risk of loss of the priority right which might also mean loss of the later application.

Feel free to contact us here to check whether your priority rights are validly transferred.

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