Priority period for EU designs doubled? What the General Court’s Decision on Priority Means for Applicants

David Gill

Partner, WP Thompson

The EU’s General Court has ruled that EU design applications can validly claim priority up to 12 months after the first filing – six months after the usual priority period has expired – so long as the first filing is an international patent application. But will applicants really benefit?

According to General Court Case T-579/19 an unforeseen interaction between the EU Council Regulation on Community Designs (Regulation 6/2002), the Paris Convention and the Patent Cooperation Treaty (PCT) has created a loophole in EU design law which allows registered designs to claim priority up to 12 after the first filing. The deadline for claiming priority under EU design law has always been 6 months, so could this ruling double the period available for applicants?

What are the facts of the case?

The case stems from an EU design filed by The Kaikai Company Jaeger Wichmann Gbr (Kaikai) for gymnastic and sports equipment. Their application was filed at the European Union Intellectual Property Office (EUIPO) in October 2018, and claimed priority from a PCT application filed more than six months before. The EUIPO summarily rejected the priority claim, not because the claim was from a PCT application (the PCT broadly defines the term “patent” as including utility models, which allows them to serve as priority documents under EU design law) but because the claim was made outside the 6 month priority period set out in Regulation 6/2002.

KaiKai refused to accept this rejection, and requested that the EUIPO issue an appealable decision, which they promptly appealed. The Board of Appeal agreed with the EUIPO’s rejection of the priority claim (see EUIPO case R 573/2019-3), and so the case was brought before the General Court.

What was the General Court’s ruling?

Unlike the Board of Appeal, the General Court agreed with Kaikai that Regulation No 6/2002 does not address a situation in which a design claims priority from a patent, and that because of this the Regulation’s six month period does not apply. The Court also agreed that the Paris Convention should be applied where such a gap in the law is found, and that current conventions in EU law should be used to interpret it (in this case meaning that the intentions of the legislators, and the context of drafting should be taken into consideration).

The Court ruled that under the Paris Convention it is the first filing – i.e., whether it is a patent, utility model or a design – which is decisive in determining the length of the priority period, unless the law specifies an exception (such as the Paris Convention‘s 6 month period for a design claiming priority from a utility model). Accordingly, a design which can validly claim priority from a patent application should be entitled to a 12 month priority period.

In the reasons for their decision, the Court referred to two cases heard at the German Federal Patent Court which cite records of the Brussels Conference of 1900, at which the Paris Convention was revised. Based on this document, the German court concluded that the Paris Convention allocates a longer priority period for patents and utility models because of the
greater relative complexity and the extended time required to register them. The logical consequence of this conclusion, according to the General Court, is that the length of priority period was set in recognition of the difficulty in filing the priority application, and so the length of the priority period should decided by the first filing rather than the right claiming priority.

What does this mean for EU design applications?

As a result of this Decision, EU design applications can now be made up to 12 months after the initial filing of the design, so long as the design views were first filed as part of a PCT patent application. For a design applicant only interested in the European Union it may now be worthwhile to include design views in any PCT applications for the same product as a matter of course, as this will provide an additional 6 months to file the design and ensure protection against subsequent third party disclosures.

For everyone else, however, trying to take advantage of this Decision could come with significant uncertainty and risk. One potential issue is that this mechanism is an unforeseen loophole in Regulation No 6/2002 which the EU could decide to close at any time. Another is that it could affect priority claims for the same design in other territories.

What about the UK and other territories?

Many territories do not allow designs to claim priority from utility models, and so the likelihood of this Decision being applicable outside of the EU seems perishingly small. This includes the UK, which has no provisions to recognise utility models as basis for such a priority claim (see Registered Designs Act 1949, Section 14(1); Registered Design Rules 2006, Rule 7) and states as much on the website of the UK Intellectual Property Office (UK IPO; see the Registered Designs Examination Practice Guide, Part C, 10.6). Thus, it seems that this loophole does not exist in UK law despite its high degree of similarity with Regulation No 6/2002.

A further issue is that we do not know whether the UK authorities will recognise a PCT application as a first filing for a design when an EU application claims priority from it. If they do, but will not allow priority claims from it under UK law, the applicant could effectively be disqualified from claiming any priority for their UK application unless they file a second, allowable first filing on the same day as the PCT application to use in its place. An applicant would need to consider whether filing two priority applications, with the accompanying cost and complications, is a worthwhile trade-off for a 12 month priority period for their EU design.

It seems that we will not have clarity on this issue until the UK IPO issues further guidance or a UK court makes a ruling on the same topic – neither of which seem likely in the near future. The legal position of other non-EU territories is equally unclear, as there is no guarantee that those which accept priority claims from utility models would come to the same conclusion as the General Court.

For the time being it appears that the 12 month priority period for EU registered designs could present more problems than solutions, and until some further light is shed on it by authorities outside of the EU it would be wise to regard it as a last resort rather than a first port of call.


Contributing Advisors

Dr Julian Potter

Partner, WP Thompson

Stuart Forrest

Partner, WP Thompson