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EU Court Rules Community Registered Designs May Claim Priority to a PCT Application Within 12 Months

In decision T 579/19 handed down on 14 April 2021, the European General Court (EGC) has ruled that the EUIPO is wrong to require that, for a valid priority claim, a Registered Community Design (RCD) always be filed within 6 months of an earlier application. Instead, the EGC has ruled that the nature of the earlier right, from which priority is claimed, is decisive for the duration of the priority period. Whilst there is no change for RCDs claiming priority to earlier design rights, the decision means that an RCD can validly claim priority from a PCT application as long as it is filed within 12 months of the PCT application.

By way of background, a right of priority refers to the principle that, for utility models, industrial designs, and patents, the date of filing of a subsequently filed application can be considered to be the date of filing of an earlier application for various purposes (most notably for determining the state of the art), provided that various criteria are met. One of those criteria is that the subsequently filed application must be filed within a "priority period", starting from the date of filing of the earlier application.

This decision relates to an application for a RCD, filed by The KaiKai Company Jaeger Wichmann GbR, on 24 October 2018, claiming priority to international patent application PCT/EP2017/077469, filed on October 26, 2017.

The 6-month priority period for a RCD is set out in Article 41 of the Community Design Regulation (EC) No 6/2002. Furthermore, according to the EUIPO Guidelines on the substantive requirements for a claim to priority, "A priority claim based on a previous patent application will in principle be rejected. However, the priority of an international application filed under the Patent Cooperation Treaty (PCT) can be claimed, since Article 2 of the PCT defines the term ‘patent' in a broad sense that covers utility models."

Therefore, according to the EUIPO, priority can be claimed from a PCT application, but as set out in Article 41 CDR, any such application must be filed within 6 months. On this basis, the EUIPO (both the examiner of the application, and the Board of Appeal during appeal proceedings) rejected the priority claim, given that the date of the earlier filing was more than six months before the filing date of the CDR in question.

In the present decision, the EGC consulted the Paris Convention for the Protection of Industrial Property (Paris Convention) which sets out the relevant priority periods in Article 4C(1), with which the Community Design Regulation must comply. In this provision, the priority period depends on the nature of the rights concerned, and is twelve months for patents and utility models, while it is six months for designs.

The decision relied on an interpretation of Article 4E(1) of the Paris Convention, which sets out that the priority period for filing an industrial design (typical priority period is 6 months) based on the previous filing of a utility model (typical priority period is 12 months), is the same as that fixed for industrial designs, i.e. 6 months. This directly addresses the case of a registered design filed from a utility model. However, the Paris Convention does not contain any express rule concerning the priority period applicable to a situation in which the subsequent application concerns a design while the priority claim is based on an earlier international patent application.

Therefore the EGC asked if Article 4E(1), as the only express rule concerning the case of two successive applications relating to rights to which different priorities are attached, reflects a general rule according to which the priority period deriving from the nature of the subsequent right is decisive or whether, on the contrary, it is an exception to a general rule according to which it is the nature of the earlier right determines the length of the priority period.

Reviewing case law from the German Bundespatentgericht (Federal Patent Court), and preparatory work for the first revision of the Paris Convention, amongst other literature, the EGC concluded that Article 4E(1) represented an exception to a general rule, and thus it is the earlier right which is decisive for the duration of the priority period.

This decision from the EGC represents a major departure from what the EUIPO considered to be a rule that was quite clearly defined in the Articles of the Community Design Regulation. However, it is unlikely that this ruling is the final word on this matter, given that the EGC is only the first instance court. For the time being, we would not recommend relying on this decision and we will wait and see if the decision is appealed to the European Court of Justice and upheld.