Internal priority

The internal priority right is the ability, for the applicant of a patent application, to claim the date of an earlier application filed in the same country, within a period of twelve months. It complements the Union priority right derived from the Paris Convention, which operates only between different countries. In France, the internal priority right is provided for in Article L. 612-3 of the Intellectual Property Code, available on Légifrance. An equivalent mechanism exists for the European patent, which may claim the priority of an earlier European application.

The conditions of the internal priority right

First, the second application must be filed within twelve months of the first. Second, it must cover the same invention: only the elements already disclosed in the earlier application benefit from its date, additions keeping the date of the second application. Third, priority must be claimed in the prescribed forms and time limits, with an indication of the earlier application. The applicant then decides the fate of the first application, which it may maintain or withdraw according to its strategy, taking into account the rules on earlier unpublished applications.

The uses of the internal priority right

The internal priority right makes it possible to file a first application very early, sometimes in summary form, in order to date the invention, then to supplement it with a second application enriched with new developments, examples or improvements. It also makes it possible to consolidate several initial applications into a single application claiming multiple priorities. It thus avoids the multiplication of titles and the loss of the initial date. The technique must however respect the requirement of novelty: new elements do not benefit from the priority and are assessed against the state of the art at the date of the second application.

Key points

In practice, the internal priority right fits into a filing strategy coordinated with the Union priority right and the PCT route. The validity of the priority claim is frequently challenged in litigation, because its loss may bring intermediate disclosures into the state of the art. The firm analyses these questions in nullity actions, as presented on the page patent nullity action.