Priority Documents: Formalities and Time Limits in Germany and Europe

priority documents of patents, trademarks and designs in Europe and GermanyMany applicants of patents, trademarks or designs in Europe or Germany have questions concerning the formalities and time limits for having the priority claim of a previously filed application confirmed.

The formalities and time limits for submitting either a priority document (certified copy of the prior application) or a simple copy of the prior application differ greatly depending on which patent or trademark office is used for filing the application and for which kind of application the priority is claimed.

The following tables summarize several typical scenarios wherein a priority document or a simple copy of the prior application must be filed within certain time limits, including the legal consequences if the applicant missed the time limits for providing the required documents.

1. German Patent and Trademark Office (GPTO)

application for: required documents: time limits: legal consequence for not filing the document:
patent¹ copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
utility model copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
trademark¹ copy of prior application 2 months from receipt of official communication loss of the priority claim, request for reestablishment of rights possible
design² copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible

¹ A certified copy of the priority document is not necessary if a priority is claimed in a  patent or trademark application – cf. BlPMZ 69, 2 and BPatGE 21, 169.

² A certified copy of the priority document is not necessary if a priority is claimed in a  design application – cf. Mitt. PräsDPA Bl. 88, 26 and Bl. 69, 2.

 2. European Patent Office (EPO)

application for: required documents: time limits: legal consequence for not filing the document:
European patent certified copy¹² of the prior application (priority document) 16 months from priority date invitation according to Rule 59 EPC; certified copy may still be filed with a 2 months time limit

¹ The filing of a priority document is generally necessary in accordance with Rule 53 (1) EPC. However, if such a document is already on file, because it has been supplied in the context of Rule 40 (3) EPC or of a request pursuant to Rule 56 EPC, no priority document must be filed.

² In accordance with Rule 53 (2) EPC and the Decision of the EPO president of August 9, 2012 (OJ 2012, 492), the EPO will include a priority document in the file without charging a fee, if the previous application is a European patent application, an international patent application filed with the EPO, a Chinese patent or utility model application filed on or after September 3, 2012, a Japanese patent or utility model application, a United States provisional or non-provisional patent application or a Korean patent or utility model application.

3. European Union Intellectual Property Office (EUIPO)

application for: required documents: time limits: legal consequence for not filing the document:
European Union trademark (EUTM) copy of prior application 3 months from filing the application loss of the priority claim, request for reestablishment of rights possible
registered European community design (RCD) certified copy¹ of the prior application (priority document) 3 months from filing the application examiner will send a letter to the applicant requesting the priority document within a time limit of two months

¹ The priority document may be filed in original or in the form of an accurate photocopy. To the extent that the original document contains a representation of the design in Color, the photocopy must also be in color (decision of the president, No. EX-03-05).

4. World Intellectual Property Office (WIPO)

application for: required documents: time limits: legal consequence for not filing the document:
patent certified copy of the prior application (priority document) 16 months from claiming priority no legal consequences in the international phase
international trademark registration (IR)  – (only data of basic registration) upon filing the request for registration  –
international industrial design registration – (only data of basic registration) 2 months from filing the request for registration  –

Update (March 28, 2016): This article now reflects the changes introduced by the Regulation (EU) No. 2015/2424 of the European Parliament and the Council.

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