Priority to register industrial designs based on a prior patent application

The Paris Convention for the Protection of Industrial Property (“Paris Convention”) signed in 1883 establishes a series of general principles that apply to various industrial property regimes, including the principles of national treatment and priority.

Under the principle of national treatment, industrial property rights (e.g., patents, trademarks and industrial designs) have a limited geographical scope. If holders of a right wishes to seek protection in other countries, they must register such right in the corresponding countries.

The Paris Convention also regulates the right of priority, which allows all industrial property right applications submitted within a specific period for the same object to be considered filed on the date of the first application. This means that the events taking place after submitting the first application do not affect subsequent applications, because the relevant date for the purpose of reviewing applications is the first one (provided it is submitted within the priority period).

In this post, we will examine the GCEU ruling in case T-579/19, which concerns several legal issues relating to the right of priority, particularly the priority period that applies to a Community model or design application based on a prior international patent application.

The Paris Convention provides the following priority periods:

• Priority period of 12 months for patents and utility models.
• Priority period of 6 months for marks and industrial designs.
• Priority period of 6 months for utility models based on a prior patent application

In addition, Council Regulation (EC) No 6/2002 of December 12, 2001 on Community designs establishes a priority period of 6 months for Community design or utility model applications.

Background:

On October 24, 2018, The KaiKai Company (“KaiKai”) made an application to register 12 Community designs with the European Union Intellectual Property Office (EUIPO), under Regulation 6/2002. In the application, KaiKai claimed a right of priority over all the designs based on a prior international patent application made on October 26, 2017.

Although the Community design applications were successfully registered, the examiner and the EUIPO Board of Appeals rejected the priority claim because it was made outside the six-month priority period set out in Regulation 6/2002 with the following arguments:

• The Court concluded that the specific matter had to be examined in the light of Regulation 6/2002, because (i) it was an application for a Community design, and (ii) the Paris Convention did not trump the European regulation.

• On the other hand, the Court held that Regulation 6/2002 did not offer a right of priority for a Community design application originating from a prior patent application but only for prior Community design or utility model applications. However, by taking a broader interpretation of “utility model,” the Court found that the patent applications were included in the scope of article 41 of Regulation 6/2002, so it offered the application a six-month priority period. In any event, KaiKai had made its application outside that period.

Appeal before the GCEU:

KaiKai further appealed the Board of Appeals decision before the General Court based on the following:

• Since Regulation 6/2002 does not include a specific provision for the priority period resulting from a prior patent application, the Board of Appeal should have applied the Paris Convention.

• Likewise, KaiKai maintains that the Paris Convention was governed by the principle that priority periods were set depending on the prior application, regardless of the nature of the right sought in the subsequent application. Therefore, if the Paris Convention set that the priority period from a patent application is 12 months, that is the priority period that should have been applied where considering its application.

After considering the parties’ different arguments, the GCEU upheld KaiKia’s appeal:

• The Court recognizes that there is a lacuna in Regulation 6/2002 in respect of the priority period that applies to a Community design application based on a prior international patent application. Therefore, since the priority right arises from the Paris Convention, it is from there that the lacuna must be closed.

• The GCEU also holds that the Paris Convention does not specifically provide a priority period in such circumstances. However, accepting KaiKai’s proposition, the Court understands that it is the nature of the industrial property right first sought that determines the priority period, regardless of the right sought subsequently. That is the case because the prior right is what generates and begins the priority right. Logic dictates that the length of the priority right must also be tied to the prior right.

• However, it is true that article 4.E)1 of the Paris Convention establishes a specific six-month priority period for industrial design applications based on a prior utility model application. However, the Court found that this provision is an exception, to be applied only in the specific case, and thus has no bearing on the prior patent applications.

Overall, the GCEU agreed with KaiKai and ruled that the Board of Appeals erred in its decision, because it originated from a prior patent application, so the priority period for Community design applications was 12 months rather than six months.

In any cause, the decision has been appealed again and is pending a hearing before the Court of Justice of the European Union, so we will be keeping an eye on new developments.