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Adding a priority claim

· PCT,priority,priority document,adding priority

On November 20, 2018 you filed a PCT application at the EPO as receiving office claiming priority of a European patent application filed on May 12, 2018 disclosing and claiming an invention inv_1.

A few days ago, your R&D service informs you that the German R&D team has filed a German utility model (Gebrauchsmuster) for the same invention inv_1 on November 30, 2017. The German utility model and the PCT application have the same applicant. You have contacted the German Patent and Trademark Office that has informed you that the certified copy of the German utility model will not be issued before April 5, 2019?

Should you worry? What can you undertake?

Proposed reply

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The German utility model may have been publicly available already. Indeed German utility models ("Gebrauchsmuster") are already publicly available as of their date of entry in the Register of utility models (Guidelines G-IV-1).

If the German utility model has been publicly available before May 12, 2018 it would be novelty destroying for the PCT application.

We should claim priority of the German utility model at least because of the novelty risk and more generally to get an earlier priority date.

According to Art 4A(1) of Paris Convention, a German utility model can be used for claiming priority.

According to Rule 26 bis 1.a PCT a priority claim may be added within a time limit of 16 months starting from the earliest priority date, i.e. November 30, 2017 + 16 months = March 30, 2019.

The addition may be made until the expiration of 4 months from the international filing date, i.e. November 20, 2018 + 4 months = March 20, 2019.

The later date applies. Therefore, the last date for adding the forgotten German utility model is March 30, 2019 extended to April 1, 2019 (Rule 80.5 PCT). It is still possible!

According to Rule 17.1.a PCT, the certified priority document should be filed at the latest 16 months after the priority date.

However, if the certified priority document issued on April 5, 2019 is filed directly with the WIPO before publication of the international application, which is according to Art 21.2a PCT about 18 months from the priority i.e. at the earliest on May 30, 2019.

Alternatively, file the priority document according to Rule 17.1.c PCT with the national or regional offices.

This proposed reply is not a legal opinion and does not engage the responsibility of Cabinet Novitech and should not replace the consultation of a Patent Attorney.

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