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Design registration in the European Union- an unusual case

An interesting point of case law arose when we received instructions containing the following request letting us know that the proposed EU design application in question will claim the benefit of and priority to, a U.S. Patent Application.

The first point we made was to draw attention to the Brexit consequences and inform our client of the need to file a separate application for UK in case the UK is interest.

We then turned our attention to the chain of priority (or priorities!). Reference was made to a U.S. Patent application – filed 5 months and 2 weeks earlier and the instructions were to have the design filed in the EU within the 6 months deadline of Priority! The instructions also mentioned a U.S. Design filing for the same design, filed 3 months after the Patent application.

The design application, although an exquisite tool of protection, added another layer of complexity to the case at hand.

An EU design application has only 7 protected views, so the first step was to choose among the views. We noticed that the drawings contained, as it is often the case in the US, a number of styles including shading and internal lines in the view. We would have preferred having new drawings matching EU standards, unfortunately these were not available. Bearing in mind that the scope of a design, particularly in EM, is determined by the drawings, we had to assume a small risk that a competitor may try to argue that the shading lines shown in the drawings, are a surface decoration on the product and therefore are part of the scope of the design.

We then turned our attention to the priority issue, the filing of a Design application for the protection of the ornamental part of the patents 3 months after the Patent application itself and had to bear in mind the stated aim to claim a 6 months priority of the Patent application.

Our view was that it is not possible to claim priority in the EU from a national Patent application – only from a Design application.

Further research confirmed that a PCT application includes the option to enter national phases, in some countries, as a utility model from the PCT rather than a patent.

In the light of this, when filing the EU design, we found it is possible to claim priority back to either a first-filed design or utility model. Claiming back to a patent application will be rejected, unless it’s a PCT application “since Art. 2 of the PCT defines the term “patent” in a broad sense that covers – also – utility models”.

But, in this particular case we faced another issue: the miscalculation of the length of the priority period: the case Tribunal UE, 14 avril 2021, T-579/19, EU:T:2021:186, The KaiKai Company Jaeger Wichmann GbR / EUIPO clearly states that, where the priority of a patent was claimed with success for a RCD, “It follows from the logic of the priority system that, as a general rule, it is the nature of the earlier right which determines the duration of the priority period’ (paragraph 77). “The nature of the earlier right is decisive for the determination of the duration of the priority period’ (paragraph 85). Since the prior right is an international patent application, the priority period was twelve months, not six as wrongly held by the EUIPO”.

This is a very interesting case, and makes a difference, since a lot of countries (Italy included) have no specific rules regarding the 6 or 12 months priority’s length, until now.

After discussions with my counterpart, it became clear that another option was available to us, the US design filing!

It is indeed possible to claim priority from a US filed design application that itself is a continuation in part of a utility patent application, where the “new design” is introduced in the US design application as the additional subject matter, so that makes the US design application the first filing for the “new design” thus setting up, in this case and in accordance to the above case law, a 6 month priority period.

After deliberation, we advised claiming the priority of the US Design application.

The above case is only one of the many different cases a Trademark or a Patent Attorney is facing every day. This makes our job challenging and the reason why we choose to work in the Intellectual property profession.

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