27 May 2021
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In a recent case (T-579/19), the European Court of Justice (ECJ) had to decide what the circumstances are to validly claim priority for a Registered Community Design (RCD) from an earlier international application (PCT). Specifically, the two main questions in dispute were the extent and interpretation of utility model in Article 41 CDR and the effective term in which priority can be validly claimed from the international application.

In the previous proceedings, the European Union Intellectual Property Office (EUIPO) refused to acknowledge the priority of the earlier international application with the argument that the application date of the international application was not within the six-month priority period stipulated in Article 41 CDR in relation to utility models. While an international patent application would not be a utility model, the EUIPO applied the same priority period analogously. Indeed, the filing date of the international application was two days short of 12 months earlier than the filing date of the RCD application.

The ECJ however denied the analogous application of Article 41 CDR to international applications. While according to Article 3 (1) PCT, any application for the protection of inventions in any of the Contracting States of the PCT may be filed as an international application, this does not make them a utility model application. Further, Article 41 CDR does not explicitly regulate the priority period applicable to RCD applications in case priority is claimed from an earlier international application.

Instead, Article 41 CDR for patent applications needs to be interpreted in light of Article 4 C (1) PC. which provides that the period of priority for patents shall be twelve months. It follows from the logic inherent in the priority system that the priority period is generally determined by the nature of the earlier right.

Indeed, Mewburn Ellis was the first IP firm to obtain a Registered Community Design validly claiming priority from an earlier PCT application in 2009.

In that case however, the application date of the RCD was within a 6 months’ time window, and not within a 12 months’ time window as in T-579/19, so the main question in dispute in the recent case was not an issue in the matter of EU Design 001149819-0001.

Christoph is a Partner and Patent Attorney at Mewburn Ellis. He handles original patent drafting and prosecution at the EPO and DPMA (German Patent and Trade Mark Office), principally in the engineering sector. Christoph regularly represents clients in opposition and appeal proceedings, as well as nullity and litigation proceedings before German courts. He advises clients on all matters of IP strategy and portfolio management, including Employee’s Inventions in Germany. Christoph also handles design matters. He is spearheading our dedicated team of future mobility experts.
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