Is my priority claim invalid in EPO if my provisional patent has no claims?

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prose2020
Posts: 3
Joined: Sun Apr 19, 2020 5:12 pm

Is my priority claim invalid in EPO if my provisional patent has no claims?

Post by prose2020 » Sun Apr 19, 2020 5:15 pm

I filed a US provisional last year. It doesn't have any claims. Disclosed my content publicly after that.

Filed PCT application within 1 year by claiming priority to US provisional and added the claims properly in PCT application.

If I file national stage EPO application from PCT, does that mean my priority document is invalid due to no claims in provisional?


EPO / Patent Information
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Joined: Wed Nov 12, 2014 3:36 pm

Re: Is my priority claim invalid in EPO if my provisional patent has no claims?

Post by EPO / Patent Information » Tue Apr 21, 2020 11:46 am

Dear prose2020,
An international application may claim the priority of an earlier application that was filed in any state party to the Paris Convention for the Protection of Industrial Property or for any member of the World Trade Organization. A declaration in an international application claiming the priority of one or more earlier applications filed in or for any state party to the Paris Convention for the Protection of Industrial Property ("Paris Convention") or in or for any Member of the World Trade Organization (WTO) that is not party to the Paris Convention must always indicate the date on which the earlier application was filed, the state or states in which it was filed and the application number(s) under which it was filed.

A priority claim from a US provisional application is also permitted (see 'Guidelines for Examination in the EPO' A-III, 6.2 in connection with Notice from the President of the EPO dated 26 January 1996, OJ EPO 1996, page 81) as is under Article 88(2) EPC the claiming of multiple priorities.

For the purposes of Article 87(3) EPC as long as the contents of the previous application were sufficient to establish a date of filing, it can be used to determine a priority date, irrespective of the outcome (e.g. subsequent withdrawal or refusal) of the application (see 'Guidelines for Examination in the EPO' A-III, 6.1).

:arrow: Please do not hesitate to contact us if you have comments or questions on this or any other subject. For information on how to reach us, visit http://www.epo.org/contact.
Kind regards,

The Patent Information User Support Team


prose2020
Posts: 3
Joined: Sun Apr 19, 2020 5:12 pm

Re: Is my priority claim invalid in EPO if my provisional patent has no claims?

Post by prose2020 » Tue Apr 21, 2020 7:49 pm

Thanks for the helpful reply


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