The CFI has established new case law on the priority period for EU designs: instead of the previous 6 months priority period for EU designs, from now on 12 months priority period will apply to EU designs – if the priority is based on an international PCT patent application.
Up to now, a shorter priority period was provided for designs than for patents and utility models because they are more complex (Art. 4 Section C Para. 1 of the Paris Convention for Patents and Utility Models). Above all, however, the registration procedure for patents or utility models also takes considerably longer than for designs or trade marks.
Facts of the case
In the case KaiKai Company Jaeger Wichmann GbR, which was heard by the European Court of Justice (ECJ) at the end of April, plaintiff KaiKai Company challenged this shorter priority period for EU designs (Community designs). The applicant had followed up the first application for a patent with an application for a design, namely a multiple application for registration of twelve Community designs with priority claim through an international PCT patent application.
The EUIPO rejected this priority right because the filing date of the previous application was more than six months before the filing date of the multiple application. Although a PCT application in principle gives rise to a right of priority under Article 41 of Regulation No. 6/2002, since the broad definition of the term “patent” in Article 2 PCT also includes utility models, the usual six-month priority period for designs applies to this application for an EU design.
Priority from a PCT application for EU designs
This decision was challenged by the applicant and brought before the European Court of Justice (ECJ). The court thus had to clarify whether EU designs can claim priority from a PCT application – and whether they are subject to the short priority period for designs or the longer one for patents and utility models.
The first aspect, namely that EU designs can claim priority from a PCT application, had already been established by the EUIPO. Rightly so, the CFI confirmed. The PCT does not distinguish on the basis of the different rights with which the various states mentioned grant protection to the invention, the CFI stated, which is why utility models and patents are also granted equivalent protection, although the utility model is also a less examined property right.
Moreover, the court explained, Art. 41(1) of Regulation No. 6/2002 says nothing about the priority period from an international patent application. Therefore, the interpretation had to take into account the rule underlying the priority right, namely Article 4 of the Paris Convention.
However, according to the CFI, Article 4 is to a certain extent a special provision. For according to Article 4(E)(1), the priority period established for the later right is decisive if that later right is a design and the earlier right is a utility model.
But does that apply in the present constellation, that the duration of the priority period depends on the nature of the later right?
12-month priority period for EU designs
The ECJ answered this question in the negative. Rather, the earlier right must be decisive for the priority right, not the later right, the court ruled. This is because the priority period begins to run on the date of this application, ergo the creation of the priority right itself as well as the beginning of the priority period depends on the earlier right and its application. It was therefore logical, the ECJ ruled, that the duration of the priority right also depended on the earlier right.
Incidentally, this also corresponds to the main justification for the longer priority period for patents, where the duration of the preliminary examination is argued. This also confirms that only the earlier right is decisive for the duration of the priority period, the court added.
The court therefore concluded that the EUIPO was wrong to consider that the time limit for claiming priority of the international patent application for the Community design application was six months. The ECJ overturned the EUIPO’s decision – and at the same time adopts new case law on the priority period for EU designs.
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