PCT International Search and Preliminary Examination Guidelines
PART II THE INTERNATIONAL APPLICATION
Chapter 6 Priority
6.11 An applicant who wishes to claim priority must state this on the request (Form PCT/RO/101) giving particulars of the previous filing, as specified in Rule 4.10 (see paragraph 6.13), although later correction of priority claims, including the addition or deletion of entire priority claims, is permitted under Rule 26bis within the time limits discussed in paragraph 6.16.
6.12 When making a claim to priority, the applicant must, in addition to giving the particulars of the previous filing, either:
(i) submit the priority document to the International Bureau or to the receiving Office within 16 months of the priority date, unless it was already filed with the receiving Office together with the international application;
(ii) where the priority document is issued by the receiving Office, request the receiving Office to prepare and transmit the document to the International Bureau; or
(iii) request the International Bureau before international publication to obtain the priority document from a digital library where the priority document is available from the digital library in accordance with the Administrative Instructions.
Any priority document submitted by the applicant which is received by the International Bureau after the expiration of that 16-month time limit will nevertheless be considered to have been received by that Bureau on the last day of the 16-month time limit if it is received before the date of international publication of the international application. Where the priority document is issued by the receiving Office the applicant may, instead of submitting the priority document, request the receiving Office to transmit the priority document to the International Bureau, in which case the time limit for furnishing the priority document has been complied with if the applicant makes the request before the expiration of the 16-month time limit irrespective of when the priority document reaches the International Bureau.
6.13 The examiner should keep in mind that the form of the declaration (see paragraph 6.11) claiming the priority of one or more earlier applications under Article 8(1) is prescribed under Rule 4.10(a). The prescribed form of declaration includes the giving of the following indications:
(i) the date on which the earlier application was filed;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
(iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
(v) where the earlier application is an international application, the receiving Office with which it was filed.
6.14 Where the earlier application is a regional application or an international application, the applicant may also indicate in the priority claim one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed.
6.15 Where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim must indicate at least one country party to that Convention or one Member of that Organization for which that earlier application was filed.
6.16 It is clear from the provisions of Rule 26bis that the indications concerning a priority claim, if not made in the request (Form PCT/RO/101), must be furnished by the applicant to the International Bureau or to the receiving Office within 16 months of the priority date or, where correction or addition of a priority claim would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that a notice correcting or adding a priority claim may, in any case, be submitted until the expiration of four months from the international filing date. The correction of a priority claim may include the correction or addition of any indication referred to in Rule 4.10.
Rules 66.7(a), (b), 17.1(c), (d)
6.17 If the examiner needs a copy of the priority document (see paragraph 6.06), the copy is supplied on request by the International Bureau, unless the International Bureau has not yet received the priority document (see paragraph 6.12). If the priority document is not in the language, or one of the languages (if more than one) of the relevant Authority, the examiner may invite the applicant using Form PCT/IPEA/414 to furnish a translation of the priority document within two months of the invitation. In the meantime, any written opinion established while there is still time to furnish the priority document or translation thereof may proceed as if the priority had been validly claimed (see also paragraphs 11.05, 17.26 and 18.16); however, if the necessary priority document or its translation is not timely furnished, any further written opinion or the international preliminary examination report may be established as if the priority had not been claimed. No designated Office may disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which is reasonable under the circumstances. Furthermore, no designated Office may disregard the priority claim if the priority document is available to it from a digital library in accordance with the Administrative Instructions.