Designs practice update: Advocate General backs 6-month priority period for EU designs based on prior PCT application

Can a Community Design application claim priority from an earlier patent application – and if so, what is the applicable priority period?

The recent opinion of Advocate General Capeta in EUIPO v The KaiKai Company Jaeger Wichmann has stated that:

• An application for an EU design (including a Community Design) can claim priority from a previous Patent Cooperation Treaty (PCT) application for the corresponding product, provided the PCT was not filed more than 6 months before the design.
• The subject matter of the previous PCT and subsequent design applications must be substantively the same in order to qualify for priority.

Background

In 2018, The KaiKai Company Jaeger Wichmann Gbr filed multiple applications with the EUIPO for registration of gymnastic and sports equipment as Community Designs. The applicant claimed priority for these designs based on an earlier international application under the Patent Co-operation Treaty (PCT). The EUIPO refused the priority claim because KaiKai’s PCT application exceeded the six-month period set out in EU legislation on Community Designs, specifically Article 41(1) of EU Regulation 6/2002. KaiKai appealed this decision, arguing that the relevant period was 12 months, relying on the priority period applicable to patents in the Paris Convention.

In April 2021, the General Court (GC) annulled the decision of the EUIPO and held that, whilst priority for a Community Design can be based on a previous PCT application, EU design law is silent on the priority period to be applied in such cases since Article 41(1) does not specify the applicable priority period for priority claims based on patents (referring instead to ‘design rights’ and ‘utility models’). The GC filled this ‘legislative gap’ by taking account of the Paris Convention and applying the 12-month priority period allowed for patent applications. The EUIPO appealed this decision, claiming that the GC’s decision gave “direct effect” to the Paris Convention contrary to established principles of EU law.

Attorney General Capeta’s opinion

In recognising that the case raised significant issues regarding the applicability of international agreements (such as the Paris Convention), the Advocate General (AG) advised that the Paris Convention could have direct and interpretative effect on EU design law. Despite the EU not being a signatory to the Paris Convention, the AG explained that it binds the Union by virtue of the TRIPS Agreement. The Advocate General considered that the EU legislature intended to align EU design law (in particular the priority rights) with the Convention, and therefore it could have direct and interpretative effect where EU law did not expressly cater for priority being claimed from an earlier PCT for a new Community design application.

It was the AG’s opinion that Article 41(1) of EU Regulation 6/2002 was intended to align EU design law with the Paris Convention with respect to priority rights for new Community design applications. On this basis, the AG considered that the GC was not in error in finding a gap in EU law and “filling it” by applying the Paris Convention and confirming that a Community Design could claim priority from a previous PCT application. The AG opined that a design application based on a previous patent application should be allowed, provided that the subject matter of both applications is substantively the same.

However, the GC did wrongly interpret the Paris Convention in its decision to apply a 12-month priority period (which is the period applicable to new patent applications) to a Community Design application.

 The length of the priority period should be based on the nature of the subsequent application, not the nature of the priority-founding application. At explained at paragraph 132 of the Opinion, the reason for extending the relevant priority period for patent applications lay in the time involved filing procedures in certain jurisdictions for a patent as a subsequent right.

In this case, the subsequent application was a design right and therefore the AG proposed that the 6-month priority time period specified in Article 41(1) should apply, consistent with the priority period afforded to industrial designs under the Paris Convention.

Implications for rights holders

This case illustrates the importance of careful deadline management for IP-rich product designs which may be protected by several overlapping rights. The Opinion suggests that the priority period for new Community design applications is fixed at 6 months, regardless of the type of right that is used as the priority-founding application. Conversely, patent applications benefit from a longer 12-month priority period under the Paris Convention. Rights holders should take into account possible variations in priority periods in their prosecution strategies.

It is also worth noting that the Advocate General’s opinion is not binding on the Court of Justice. The role of the Advocate General is to propose legal resolutions to the Court on relevant cases, though the AG’s opinion is followed by the CJEU in the majority of cases. The Judges of the Court of Justice are now beginning to consider this case with judgement to be given at a later date, which will be reported by Law Now in due course.