Can an application for a community design registration claim priority of an international patent application – and if so for how long? That was the question that the Court of Justice of the European Union had to decide in matter T-579/19. Their decision dated 14 April 2021 was very interesting and established that this was possible and that the design right was also entitled to a twelve-month priority period, and not just a six-month period.
Indeed, the Court clarified that that Art. 41.1 of the European Union’s Regulation 6/2002 on Design Rights of 12 December 2001 is not a bar to claim the priority from an earlier patent application and thus confirms the prior German practice to allow a twelve-month priority claim based on a first filed patent application.
Art. 41.1 of the Regulation 6/2002 of 12 December 2001 states:
A person who has duly filed an application for a design right or for a utility model in or for any State party to the Paris Convention for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application.
In the present matter, the European Union’s Intellectual Property Office (EUIPO) had confirmed that an international PCT-Application is also an application for a Utility Model and had thus considered that the entitlement for a priority claim based on a PCT-Application was valid. The Examiner however considered that only the 6-month deadline for claiming priority applies, accordingly.
The Court set out its thinking in paragraph 56 of the decision
With regard to the wording of Art. 41(1) of Regulation No. 6/2002, it should be noted that it does not cover the case of filing an application for a design by invoking a priority right based on a patent application, and therefore it cannot provide for a time limit for claiming priority in this situation.
and continued in paragraph 57:
Contrary to what the EUIPO assumed, Art. 41(1) of Regulation No. 6/2002 therefore does not regulate conclusively the time limits within which a priority may be claimed in the context of a subsequent application for a design.
The conclusion was clear. The provisions of the Paris convention to base the priority term on the application type from which the priority is claimed are not overruled by the Regulation 6/2002 of 12. December 2001. Hence, the priority claim based on a prior PCT-Application for an application filed for a European design right within 12 months is valid.
The decision is interesting as it opens the option for claiming the priority for a community design application based at least on a first filed PCT-Application. It seems to us that the same principles must apply to any national/regional first filed patent application giving the right to a priority claim under the Paris convention.
On the other hand, the decision represents also a major potential risk for the practice of applicants that file both design right and patent applications without claiming priority to each other. An application for a design right filed prior to a patent application might destroy the option of subsequent filings of patents claiming priority of the initial patent application. The initial patent application would not be a “first filing” which gives entitlement to the priority claim.
Similarly, the priority claim of a first filed application for a design right might be jeopardized by an earlier patent application.
One solution would be simultaneous filing. An alternative solution would be to draft for an initial patent application, or a provisional application to give a proper basis for one or more subsequent design applications and/or Patent applications. It might even be reasonable to file for a provisional patent application in order to the benefit from the twelve-month priority deadline for a later design application even if subsequent patent applications are not foreseen. An interesting aspect will be whether for current cases, an opponent could try and challenge a valid priority claim in case the applicant had filed a design application prior to the filing of the initial patent application.
We recommend reconsidering filing strategies when both an application for a design right and a patent are planned. We believe that the safest way would be to carry out simultaneous filings of both the application(s) for the design right(s) and the patent(s). Alternatively, it might be better to file a detailed patent specification including a comprehensive basis for a design application before filing an application for the design right. In this latter case we would recommend the filing of the subsequent design application(s) within the six-month priority window ideally exactly on the very last day thereof and to then file one or more subsequent patent application(s) at the end of the initial twelve-month term and thus six months after the design application claiming both priorities, even though it might be that the later priority claim could be considered invalid.
It will also be interesting to see whether the regulation will be amended in the near future to either reflect the findings of the present decision or whether the regulation will be amended to exclude the right to claim for a priority of a prior Patent application.
The decision is directed to European design rights. It remains to be seen whether similar decisions might be adopted in other countries. Furthermore, this matter again shows that proper filing strategies are crucial, not only taking into account possibly existing grace periods that very often are calculated based on the filing date and not the priority dates.
If you have further questions or comments, please feel free to contact us
Fred Sonnenberg
