Claiming priority from a CIP design

Wendy Crosby

Claiming priority from a CIP design

When filing a design application in EU or UK, we can request the filing date be back-dated to the date upon which the same design was first filed in a foreign country, as long as the EU or GB designs are filed within 6 months of the original foreign filing date.

This is an important step because the filing date of your EU or GB design applications will be the date used to determine whether the design registration you eventually obtain is valid.

Backdating your effective filing date in EU or GB, otherwise known as claiming the priority date of a foreign application, allows you to disregard any prior designs published between filing of your first foreign design application and your EU or GB applications when assessing validity.

It is an important aspect of Intellectual Property Law that claims to priority can only be made from the first application filed for a particular design rather than a design application which itself claims priority from another, earlier filed case.

In the US it is possible to file a second design application which claims priority from the first but which adds further subject matter to the original application and so discloses a different design than the first application. This is known as a continuation in part application. Any subject matter common to the first and second applications will claim priority from the first application and therefore share the filing date of the first application, but new matter added to the second application, which was not also in the first application, can be considered as a new design for priority purposes.

Therefore it is possible to identify the CIP design application in the US as the “first filing” of a new design and thus claim priority from that portion of the CIP design when filing EU and UK design applications.

For more information on this or any other design aspects, please get in touch with Murgitroyd’s Design Team who will be happy to help.

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