How Patent Priority Affects the Protection of Industrial Designs?

The design of a product is still one of the most important factors in establishing a distinct brand. It is crucial for brand communication, which is why companies invest so much time and money in producing eye-catching graphics to represent their products. Because brand communication is inextricably tied to product design, modern organizations must include design strategy as part of their overall business plan.

A mix of lines and colors, or any three-dimensional form with a distinct impression, can be classified as Industrial Design. Because a product’s design is regarded as its essence and boosts its visual appeal, safeguarding it ensures your distinct brand identity. It covers a wide range of items, including jewelry, lighting, packaging, textiles, technological goods, and even trademarks. Brands with striking, unique designs are typically seen as industry trendsetters by consumers.

Design plays an important role in our daily lives, ensuring industry efficiency and enhancing processes to innovate and produce new goods. It is present in fashion, influencing modern consumer trends, as well as its social function in altering everyday products to meet the requirements of the elderly, disabled, and children with special needs.1

LANDMARK JUDGMENT

A look at the EGC’s decision in case T 579/19 from April 14, 2021, will let us reflect on the diversity and intricacy of these rights. Indeed, the court’s decision focuses on the relationship between a patent’s priority rights and their extension to design priority rights.

Facts of the case

On October 24, 2018, The Kaikai Company Jaeger Wichmann Gbr (applicant) submitted multiple applications with the European Union Intellectual Property Office (EUIPO) for registration of gymnastic and sports equipment. The petitioner claimed priority under international conventions and treaties when applying.

Why? Because strategically, claiming priority allows subsequent applications to be filed using the filing date of the first application in each of the PCPIP signatory nations as the filing date. However, this is only true if the necessary time limits are met: twelve months from the date of the first application for patents and six months from the date of the first application for industrial designs and trademarks.

The applicant in this case claimed priority based on a first international patent application (PCT), the graphic representations of which were identical to the designs to be registered. What was the intent of the applicant? That the application filed after the six-month priority period established under design legislation, and specifically in article 41 of Council Regulation (EC) No 6/2002 on Community designs, be considered the first date of filing. The priority was predicated on the filing date of an international patent application, which has a twelve-month priority period, according to the applicant.

Before jumping to a hasty conclusion, keep in mind that the PCPIP’s article 4 section E recognizes the interdependence of patent, utility model, and industrial design rights when asserting reciprocal priority:

Section E

1. Where an industrial design is filed in a country by a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.
2. Furthermore, it is permissible to file a utility model in a country by a right of priority based on the filing of a patent application, and vice versa”.

The EUIPO denied the priority claim, and the Board of Appeal (case R573/2019-3) upheld the refusal, concluding that both Regulation 6/2002 and the PCPIP provide a six-month term for priority applications for designs, regardless of the type of right on which the applicant rests the claim.

According to Regulation 6/2002 and an extended interpretation of the PCPIP, the EUIPO’s Board of Appeal clearly and publicly accepted the acceptance of a prior claim based on the filing date of a previous patent if it conforms with the priority periods controlling industrial designs:

Article 4, section C, point 1): “The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.”

The applicant objected to the way the Board of Appeal read article 41 of Regulation 6/2002, which does not explicitly define the option of claiming priority based on an earlier invention, in his EGC appeal. To “complete the gap in said Regulation, which is silent on the priority period emanating from an international patent application,” the Board of Appeal had to refer to the provisions of the PCPIP.

The nature of the earlier right claimed to determine the duration of the priority period is consistent for the EGC (TELEYE judgment T-128/99), because if the actual start of the priority right and the start of the period of such right are both dependent on the earlier right, then the duration of the priority right should logically be dependent on the earlier right.

Article 4, section E, 1 of the PCPIP, in the view of the EGC, is a particular rule, an exception to the idea that the nature of the earlier right is significant in determining the priority period’s duration. As a result, the EGC concluded that the Board of Appeal’s rationale was wrong. The EGC found that the Board of Appeal should have based the period on the nature of the earlier right claimed, the patent, and should have applied the PCPIP requirements in the absence of a clear provision in Regulation 6/2002.The EGC’s decision will have a significant impact on corporations’ protection plans, as they will be able to prolong the protection of a design claiming priority based on a prior patent application to twelve months.