Priority right: what is it and how to claim it?

  • By:Kelvin Wibawa
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Parties that recently had their intellectual property registered in their home countries and already have plans to expand their businesses abroad can often claim their so-called ‘priority right’. Getting priorities in the protection of your trademark, patent or industrial design, of course, sounds great. But what are exactly the benefits of this right, and how can applicants for intellectual property registration acquire it?

Which laws arrange priority right?

The Paris Convention

The most well-known priority right is known as ‘Convention priority right’ and derives from the Paris Convention for the Protection of Industrial Property (also simply known as the Paris Convention). This over a century-old treaty is presently in force in Indonesia, as well as in virtually every other country on earth.

The Patent Cooperation Treaty (PCT)

In certain jurisdictions, applicants can also claim priority right based on other international agreements. The Patent Cooperation Treaty, for example, contains provisions regarding priority right for applications filed with the intellectual property offices of its signatory states. Like the Paris Convention, the Patent Cooperation Treaty is ratified by the far majority of the world’s nations – including Indonesia.

Other international agreements

Though not being in force in Indonesia, the European Patent Convention is another treaty containing its own definition of priority right. Lastly, individual bi- or multilateral treaties can establish a priority right for parties from a signatory state when filing an application in another. Given the fact almost every country is a member state to the Paris Convention nowadays, such treaties that are still in force barely exist anymore.

read also: first to file vs first to use countries

What rights does one obtain from priority right?

Priority right does not lead directly to faster or ‘better’ protection of one’s intellectual property but applies to the date an application is filed. If honored, priority right changes the date someone filed his application for intellectual property registration abroad to the earlier date he filed for protection of the same trademark, industrial design or patent in his home country. This principle is probably best explained by the following example: Mr. A files an application for the registration of his patent in the United Kingdom on January 1, 2019. According to article 4 of the Paris Convention, Mr. A can claim January 1, 2019, to be the filing date of any application for registration of the same patent in another signatory state to the Paris Convention – as long as he files this application within twelve months. Mr. A filed his application in Indonesia ten months later, on October 1, 2019 – but in the meantime, Mr. B files an application for registration of the same patent in Indonesia on February 22, 2019. Under normal circumstances, Mr. A’s application would be rejected as Mr. B filed his application well before Mr. B filed his. If Mr. A, however, claimed his priority right, he can state January 1, 2019, as the filing date of his application in Indonesia, and Mr. A will be regarded as the first person to have filed the application.

How to obtain priority right

Important to realize is that priority right does not arise naturally. If Mr. A in our example does not claim his priority right when he files his application for patent registration in Indonesia, he will not hold it and he can not state January 1, 2019, as the filing date of his application in Indonesia.

The criteria a claim for priority right has to meet vary slightly among countries. Anyone who wants to file an application for intellectual property registration in Indonesia and wants to claim his priority right must hold ‘evidence’ of a previous foreign application for registration of the patent, trademark or industrial design. This ‘evidence’ should come in the form of a transcript of this previous foreign application, as issued by the relevant authorities. The transcript must be accompanied by a translation of this document into the Indonesian language, drafted by a sworn translator.      

Can priority right still be claimed for an application that has already been filed?

Whether an applicant can still claim his priority right for an application that has already been filed highly depends on the examination stage the application is in. Claiming priority right after filing is only possible when the application is still in its first stage, known as the ‘formalities examination’. During this stage, the Indonesian Directorate-General of Intellectual Property (DGIP) checks if the application contains all the required information and will notify applicants or their representatives if such information is missing. If no claim for priority right is included in the request, the DGIP obviously does not know the applicant wants to claim his priority right. The DGIP, in this case, will process the application without sending a notification about missing priority documents, and the applicant loses his possibility to claim priority right for it.

Therefore, applicants must find out for themselves if their intended claim for priority right is missing in their applications – and request for a correction of the application with the DGIP. The DGIP, however, does charge additional fees for the correction of an already filed application. Moreover, the formalities examination during which such corrections can be made only lasts a couple of weeks until a month. For this reason, applicants have to notice their missing claim for priority right in time and must act fast upon spotting it. An experienced IP lawyer Indonesia or intellectual property consultant knows under which circumstances it is worth to claim priority right and knows how and where to lodge a claim for priority right for an already filed application.

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