Early last year, the Court of Justice of the European Union (CJEU) confirmed two important points regarding design rights in the EU:
This decision overturns previous uncertainty caused by General Court (GC) ruling T-579/19, although there are still interesting questions as to how this would work in relation to PCT applications which themselves claim priority to an earlier patent application.
Background
The uncertainty about this topic started due to European Union General Court (GC) decision T 579/19 which concluded that if a design application claims priority from a PCT application, then the priority period is 12 months, since it is claiming priority from a patent, rather than the usual 6 months.
By way of background, a design can be filed claiming priority from an earlier application for a registered design or a utility model. This allows the later application to be “backdated” to the date of the earlier application. This is most relevant for assessing the state of the art against which the design application will be assessed for novelty. As set out in Article 41 of the Community Design Regulation (EC) No 6/2002, the REUD must be filed within 6 months of the earlier design in order to validly claim priority.
Although in general, priority for a REUD cannot be validly claimed from a patent application (Article 41(1) of the Community Design Regulation (EC) No 6/2002), a PCT application is an exception. A PCT application effectively acts as a “placeholder” application, which provides the Applicant with additional time to decide which countries they would like to seek protection in. To do so, the Applicant will enter the PCT application into various national/regional phases. Typically, a national/regional entry of a PCT application will be as a patent application. However, a PCT application can also be entered into some countries as a “utility model”. The exact definition of a utility model varies from country to country, but typically they protect technical inventions similar to patents, but have lower bars for novelty and/or inventive step than patents, and shorter maximum lifespans.
The reason for the exception to allow an REUD to claim priority from a PCT application is because, as explained in the EUIPO Guidelines on the substantive requirements for a claim to priority, “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,” and priority for an REUD can be claimed from a utility model.
GC Ruling T-579/19
In T 579/19, the GC considered that there was a gap in the law since Article 41(1) is silent on priority periods of an REUD arising from patent applications. Therefore, the GC looked to Article 4E(1) of the Paris Convention to clarify the situation. This provision sets out that the priority period for filing an industrial design (which is typically 6 months) based on the previous filing of a utility model (typically 12 months), is the same as that fixed for industrial designs, i.e. 6 months. After reviewing case law from the German Federal Patent Court, and preparatory work for the first revision of the Paris Convention, the GC concluded that Article 4E(1) represented an exception to the rule, and in general it is the earlier right which is decisive for the duration of the priority period. Therefore, the GC concluded that in the present case, of an REUD claiming priority from a PCT application, the priority period is 12 months based on the earlier right being a patent.
CJEU decision C-382/21
However, CJEU decision C-382/21 overturned decision T 579/19 and concluded that the priority period for a Registered EU Design (REUD) is never longer than 6 months, even when claiming priority from a PCT application. Although the CJEU found that the General Court was justified to use the Paris Convention to ‘fill the gaps’ of Article 41(1), they concluded that neither Article 41(1) of Regulation 6/2002 nor Article 4 of the Paris Convention allow claiming priority from a patent application when filing a subsequent design application. Therefore, the only priority period available is the 6-month period from a utility model.
Decision C-382/21 means that while design applications can still claim priority from PCT applications (since they are considered utility models) within a six-month period, they cannot make use of a 12-month convention deadline. Therefore, one must always ensure that a priority claiming REUD is filed within the standard 6-month period.
Is a Priority claiming PCT a first filing for this purpose?
An interesting question arises in relation to whether priority can be claimed from a PCT application which itself claims priority from an earlier patent application. Under Article 41(1) of the Community Design Regulation, the earlier application must be the “first application”. However, as explained above, this is explicitly in relation to a design right or a utility model. Thus, would an earlier patent application count, thereby rendering the PCT application claiming priority therefrom to not be the first filing and hence invalidate any priority claim to the PCT application?
This may depend on the jurisdiction of the earlier patent application, and whether it can be converted into a registered design application and/or utility model in that territory. For example, in the UK this is not possible and so the earlier UK patent application is not and cannot be converted to either. Thus, it would be easier to argue that the PCT application is the first application for a utility model.
On the other hand, a US design patent can be filed as a continuation from a US utility patent. Likewise, various countries with utility model systems allow conversions of national patent applications into utility models. It may therefore be harder to argue that in such cases the PCT application was the first-filed utility model.
In this regard, it is noted that the EUIPO does not recognise a priority claim to a US utility patent, even though as noted above a US design patent can be filed as a continuation thereof. It may therefore appear from a consistency basis that a US utility patent should not be considered as an earlier first filing.
Therefore, if you are considering filing a REUD derived from a PCT application, careful consideration will need to be given – and there may not be a definitive answer as to whether the priority claim is valid or not!
In conclusion – proceed with caution!
It is therefore generally not recommended to take this route, unless in exceptional circumstances. It can also add additional complexities in being limited to the drawings as shown in the PCT application, which will typically not be the same as the drawings for a design application. For example, in design applications it is common to disclaim one or more features with the use of broken lines. Such lines are unlikely to be used in a PCT application.
However, if you find yourself in a situation where design protection was not applied for in a timely manner, and there is a relevant PCT application which was filed in the least six months, you might be able to salvage some design protection using these provisions.
Of course, the present analysis only applies to REUD. If you are looking to protect your design, in other territories outside of the EU then additional consideration will need to be given to the local laws in the other territories of potential interest. For example, as noted above it may be possible in the US to file a continuation design patent.
Key take aways
If you would like to explore filing a design application claiming priority from a PCT application, please do reach out to Jonathan Pratt.
Quotes
“One must always ensure that a priority claiming REUD is filed within the standard 6-month period”
“If you are considering filing a REUD derived from a PCT application, careful consideration will need to be given – and there may not be a definitive answer as to whether the priority claim is valid or not!”
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