Many 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.
Update (June 2026): Electronic exchange of priority documents via the WIPO Digital Access Service (DAS)
Since this article was last updated, the most important practical change concerns how a priority document reaches the office of second filing. In many constellations, a certified paper copy no longer needs to be obtained and filed: instead, the document can be exchanged electronically through the WIPO Digital Access Service (DAS). DAS is an electronic system allowing priority documents to be securely exchanged between participating IP offices, covering patents, utility models, industrial designs and trademarks. The applicant asks the office of first filing (the “depositing office”) to make the priority document available to the system and then asks the office of second filing (the “accessing office”) to retrieve it via a DAS access code; the exchange then takes place directly between the offices.
The relevant offices in the tables above have joined DAS at different times and in different roles:
- European Patent Office (EPO): The EPO joined DAS as from 1 November 2018. At the applicant’s request, the EPO will include a copy of the previous application retrieved via DAS in the file free of charge, which satisfies the requirement of Rule 53(2) EPC. Where the EPO is the office of first filing and the application is filed via Online Filing, a DAS access code is generated automatically and included in the receipt (no code is generated for divisional applications). If a document cannot be retrieved via DAS (or no code was provided) and the priority application is an EPO, JPO, KIPO, CNIPA or USPTO application, or a PCT application with RO/EP, the EPO still includes a copy free of charge, as before; otherwise the applicant is invited under Rule 53(1) EPC to furnish a copy. Note also that a priority document may not be filed by fax, and Web-Form Filing must not be used to file priority documents.
- EUIPO: The EUIPO became a participating office in WIPO DAS as an office of first filing on 11 July 2020 and as an office of second filing on 12 September 2020, so that e-filing applicants can now submit the documents required for a priority claim by reference to a DAS access code. As office of first filing it initially made priority documents for registered Community designs (RCD) available in DAS. Where the document is already available in DAS it can be retrieved immediately; otherwise the EUIPO must request it from the office of first filing, which may take 24 hours or more and can cause delays.
- DPMA (GPTO): The DPMA began participating in WIPO DAS as a depositing office for patents and utility models on 25 November 2024. On request (form A 9164), priority documents for patent and utility model applications filed with the DPMA are deposited in DAS free of charge, and the applicant receives a confidential access code (electronically via DPMAdirektPro or by post) that can be cited worldwide. The DPMA does not yet act as an accessing office — preparations are under way — and paper priority documents remain available on request (form A 9165).
Practical takeaways. The time limits and legal consequences set out in the tables above are unchanged; DAS only changes the means of providing the document. Where both the office of first filing and the office of second filing participate in DAS for the relevant right, it is usually advisable to request deposit of the priority document at the first filing and to provide the DAS access code (correctly and in good time) at the second filing, rather than ordering and filing certified paper copies. Because participation differs by office and by type of right — and because the DPMA, for the time being, only deposits rather than retrieves — it remains essential to check, for each individual case, whether retrieval via DAS is actually available; if in doubt, a certified copy should still be obtained within the applicable time limit. The network of participating offices continues to expand, so the available options should be reviewed at the time of each filing.
