More time required to decide which countries to apply to for IP protection? Claim priority

Claiming priority is a handy tool that allows you to back-date the date of protection of your IP rights (e.g. trade marks, patents and registered designs) in multiple territories to the date that you filed your first application for those IP rights in any territory (the ‘priority date’).

The option to claim priority is available where the territories in question are members of certain relevant international IP conventions, including the Paris Convention, the World Trade Organisation or the European Patent Convention and, in practice, claiming priority in this way means that your applications will have priority over other applications filed in those territories (provided they were filed after the ‘priority date’).

The period to make this claim for trade marks and registered designs is 6 months, whilst for patents, you have 12 months.

From a cost perspective, this will take pressure off you because you will not have to pay for multiple IP applications in multiple territories in one go. Instead, you have the option to file one application in your ‘base’ or ‘home’ territory first, and then file the remaining applications in the other territories within six months.  This also gives you breathing space to decide on which territories you would like to register the same IP in. It is therefore worth considering where the biggest markets for your business are in this time.

When claiming priority for each IP right it is important to bear in mind the following key points:

1. the applicant for the earlier IP right must be the same as the applicant for the later IP rights which are claim priority from the earlier application;
2. the later trade mark, patent or registered design must be the same as the earlier trade mark, patent or registered design from which priority is claimed (the law regarding registered designs differs across jurisdictions, and so the requirements in priority applications may be different);
3. The goods and/or services (in the case of trade marks) and the claimed invention or design (in the case of patents or registered designs) covered by the later application must be the same or narrower as those covered by the earlier application from which priority is claimed; and
4. do not forget about grace periods. This is the period from the date of disclosure of your design or patent wherein your new product design or invention is still considered as novel. For registered designs, you have 6-12 months, depending on the country, from the date you disclose your new product design to file your application for a registered design right (12 months in the EU and UK). For patents, you have 6-12 months from the date you disclose your new invention, to file your patent application (6 months in certain countries in Europe, including the UK). Note that there is no such grace period for trade marks (because there is no novelty requirement for trade marks as there is for patents and designs), and not all jurisdictions provide a grace period for disclosed designs. It is important to consider the interplay between the priority deadline and the grace period deadline when prepare to file applications for patents and registered designs.

At Briffa, we have a wealth of experience across the IP spectrum. We can help you with your business’ expansion, by registering your IP and staying on top of key deadlines, to ensure your claim for priority goes smoothly.