On the 27th February 2024 the Court of Justice of the European Union (CJEU) issued a decision on priority rights of Community Designs in the EU.
The CJEU decided that designs which claim priority from an international utility model application (e.g. a PCT patent application) have a six-month priority period. This decision reversed the decision of the General Court and unusually did not follow the Advocate General’s opinion.
The decision has eliminated the loophole which seemed to allow design applications (normally entitled to a 6 month priority period) to claim priority from a PCT patent application and enjoy a longer 12 month priority period. The CJEU has also confirmed that EU registered designs cannot claim priority from patents more generally. Priority claims from PCT applications only work because PCT applications are equivalent to utility models in some countries.
History
In 2018, a registered design application was filed, claiming priority from an international patent application. The EU Intellectual Property Office (EUIPO) accepted the application but refused the claim to priority because it was made outside the six-month period set out in Article 41(1) of Regulation 6/2002.
Article 41(1) of Regulation 6/2002 states:
“1. A person who has duly filed an application for a design right or for a utility model […] 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 2019, the applicant appealed this decision, arguing that the priority period should have been twelve months not six months, because the earlier application was a patent application. The Board of Appeal at the EUIPO dismissed the appeal because they found that the examiner had correctly applied Article 41(1). The Board agreed that a PCT patent application can be seen as equal to a utility model application and can therefore provide basis for a priority claim for a Community Design. However, the Board concluded that the priority period is 6 months from the date of filing of the first application (regardless of whether it is a PCT patent application). Since the applicant filed the registered designs after the six-month period, the claim to priority was invalid.
Later in 2019, the applicant appealed the EUIPO’s decision at the General Court. The General Court found that the Board of Appeals had incorrectly applied the priority period. They concluded that a PCT application could be characterised as both a patent application and a utility model application, and that Article 41(1) is silent on priority periods arising from patent applications. Therefore, the General Court looked to Article 4 of the Paris Convention to establish the correct priority period. Article 4 states:
“(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.”
Using the Paris Convention to ‘fill in the gap’ of priority periods arising from patent applications, the General Court concluded that designs could claim priority from a patent application and that the priority period is twelve months.
In 2021, the EUIPO appealed the General Court’s judgement to the CJEU. The appeal raised the question of whether international agreements (such as the Paris Agreement) have any direct or interpretive effects on EU law.
Although the EU is not a party to the Paris Convention, all EU member states are, and the EU is a party to the TRIPS Agreement which states that each member shall comply with Articles 1-12 and 19 of the Paris Convention. So, although the Paris Convention has no direct effect on EU law, interpretive effects should be considered.
The EUIPO claimed that the General Court incorrectly interpreted the influence Article 4 of the Paris Convention on the reading of Article 41(1). The wording of Article 41(1) excludes patents so the EUIPO argued that even considering interpretive effects of the Paris Convention, the General Court should not simply insert the terms ‘patent’ and ‘twelve months’ into the interpretation of Article 41(1). The applicant for the registered design disputed this, stating that there was a gap to fill, and that the wording of Article 41(1) doesn’t exclude other intellectual property rights from forming the basis for a priority claim.
Taking everything into consideration, the CJEU found that the General Court was justified in ‘filling the gaps’ of Article 41(1) by using the Paris Convention. However, neither Article 41(1) of Regulation 6/2002 nor Article 4 of the Paris Convention make it possible to claim priority from a patent application when filing a subsequent design application. Therefore, the CJEU upheld the EUIPO’s appeal and clarified that the Paris Convention does not confer priority rights for a design application based on any preceding ‘patent application’.
Summary
This decision means that whilst design applications can still claim priority from international utility model applications (such as PCT applications) within a six-month period, they can’t claim priority from a ‘patent application as such’ and make use of a 12 month convention deadline.
Going forwards, the closure of the loophole highlights the importance of forward thinking and prioritising designs in IP strategy to avoid missing out on protection. Best practice remains filing EU registered design applications comfortably within the usual 6 month convention deadline.