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Applications made in member states of Paris convention benefit from 12-month priority. If I made my application in EPO (which, importantly, is not a state and not a member of Paris convention) does it benefit from the same 12-month priority under Paris convention (I am assuming no other application of the same invention was made in a Paris convention member state)? Same question can be asked about PCT applications (WIPO is not a state).

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The answer regarding PCT is easy. A PCT application is not an application to the non-state WIPO. It is a bundle of application to 140+ countries.

Regarding the EPO. I'm sure Paris applies but did not find a solid reference. I did find this in the EPO website.

Relationship to other international conventions 

2.3.001

The EPC constitutes a special agreement within the meaning of the Paris Convention for the Protection of Industrial Property.  This means in particular that the principles of the Paris Convention on claiming priority and the national treatment principle also apply in the European procedure and to European applications.

I see "special agreement" mentioned in Article 19 in Paris but the language of that article doesn't mention priority. It is possible that the same situation as the PCT case applies.

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I think it’s a great question.

EPC allows any Paris convention or WTO member to file nationally and then claim priority when filing at EPO.

It seems that being EPC an Special Agreement under Article 19 of the Paris convention (An Agreement between members of Paris), it is then understood the filing at EPO as a member of the union filing.

The EPC constitutes a special agreement within the meaning of the Paris Convention for the Protection of Industrial Property. (Article 19)

This means in particular that the principles of the Paris Convention on claiming priority and the national treatment principle also apply in the European procedure and to European applications. Art. 87-89

Since nearly all the EPC contracting states are members of the WTO, the relevant provisions of the TRIPS Agreement (Agreement on trade-related aspects of intellectual property rights) are implemented in the revised EPC. Source

The certificate issued by the EPO says that you can use the paris convention :

The organization code and number of your priority application, to be used for filing abroad under the Paris Convention, is EP########

ON PCT:

EPC classifies as a Regional Treaty (Article 45 of PCT)

Source:

The EPC further constitutes a regional patent treaty within the meaning of Article 45(1) PCT, which means that European patents can be granted on the basis of an international application filed under the PCT.

EXAMPLE:

For example patent US9895170 did a priority claim with EP2764840B1 but also claimed the benefits of a US provisional patent both filed the same day of 2013:

The present disclosure claims the benefit of U . S . Provisional Patent Application Ser . No . 61 / 763 , 426 , filed Feb . 11 ,2013 , the contents of which are hereby incorporated by reference in their entirety , and claims priority from European Patent Application EP 13154823 . 2 , filed Feb . 11 , 2013 , the contents of which are hereby incorporated by reference in their entirety .

Paris says:

Article 4 A (1): Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

EPC says:

  1. European Patent Convention The European Patent Convention (EPC) is an international treaty that sets out a priority right system for first filings in or for states which are party to the Paris Convention or any member of the World Trade Organization (WTO). Article 87(1) EPC reads as follows: "Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application." According to Article 88(2) EPC, it is even possible to claim multiple priorities of a patent application or a patent claim, meaning that an applicant may claim more than one priority based on previous applications in the same or different states and/or WTO members.

Source: epc priority

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  • I couldn't pin it down either. – George White Dec 20 '20 at 3:56
  • Sorry, Could you explain me what you mean ? – YOGO Dec 20 '20 at 9:23
  • While I appreciate the quotes provided, it would be better to clearly interpret what is quoted in lay language. I'm not sure what the answer is. – Eric S Dec 20 '20 at 15:44
  • I saw the quoted language as well but couldn't see a definite answer in the wording. – George White Dec 20 '20 at 18:30
  • I'm sure that an EPO filing must be a Paris filing but I do not see it in black and white in your answer or anything I found. What the EPC claims about the Paris convention is not the same as what the Paris convention itself says. Other countries abide by Paris, not any EPC claims about Paris. – George White Dec 20 '20 at 19:05

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