The Court of Justice of the European Union (CJEU) will soon decide on the question of whether the priority of an earlier patent application can be claimed for a registered community design application. It will also decide whether the priority period in this case is 12 months or 6 months. In a so far very rare case, it allowed the appeal filed by the European Intellectual Property Office (EUIPO) against a decision of the General Court of the European Union (GCEU) by decision of 10 December 2021, so that it will now make a decision on the merits (C-382/21 P, published e.g. in GRUR-RS 2021, 55882).
The action brought against this decision was successful and led to the annulment of the decision of the EUIPO Board of Appeal, against which the EUIPO again appealed to the CJEU.
2. According to Art. 58a (3) of the Statute of the CJEU, an appeal against a decision of the GCEU concerning a decision of an independent board of appeal of the EUIPO shall proceed only if it raises it raises an issue that is significant with respect to the unity, consistency or development of Union law. In the present case, this essentially concerns Art. 41 (1) CDR and Art. 4 of the Paris Convention for the Protection of Industrial Property (Paris Convention).
According to Art. 41 (1) CDR, any person who has duly filed an application for a design or a utility model in or for any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation shall enjoy, in respect of the filing of an application for a RCD for that design or utility model, a right of priority of six months from the date of filing of the first application.
Art. 4 Sec. C, para. 1 of the Paris Convention provides that a priority period of 12 months shall be granted for patents for inventions and utility models and a priority period of 6 months shall be granted for industrial designs and for trademarks.
Art. 4. Sec. E. para.1 of the Paris Convention further provides that where an industrial design is filed in a country by claiming a right of priority based on an application for a utility model, only the priority period specified for the industrial design shall apply. Paragraph 2 further states that it is also permissible to file a utility model in a country by claiming a priority right based on the filing of a patent application and vice versa.
Although the European Union is not itself a party to the Paris Convention, it is a party to the TRIPS Agreement, which refers to the provisions of the Paris Convention on several occasions, including Art. 4 of the Paris Convention (cf. Art. 2 of the TRIPS Agreement).
3. In the decision appealed by the EUIPO, the GCEU first states that Art. 41 (1) CDR does not regulate the case of an application for a RCD claiming a priority right based on a patent application and therefore does not provide for a time limit for claiming priority in this situation. Contrary to the opinion of the EUIPO, Art. 41 (1) CDR does not conclusively regulate the time limit within which a priority may be claimed in the context of a subsequent RCD application (GCEU, loc. cit., para. 56 et seq.).
The GCEU justified the possibility of claiming priority of a patent application for a RCD by stating that Art. 41 (1) CDR was historically based on the provisions of the Paris Convention on the right of priority and its time limit provisions and therefore had to be consistent with them (GCEU, loc. cit., para. 58). In principle, any provision in the CDR was also to be interpreted in such a way that it remained compatible with the Paris Convention, whereby the context of these terms and the objective of the relevant provisions of the Paris Convention were also to be taken into account. This applied to all areas of intellectual property law (GCEU, loc. cit., para. 61).
Against this background and based on the fact that the CDR did not regulate the priority period resulting from a patent application, recourse should be made to the provisions of the Paris Convention to fill this gap in the CDR (GCEU, loc. cit., para. 66).
In the proceedings before the GCEU, the EUIPO was in principle also of the opinion that the priority of a patent application could be claimed for a RCD. However, it based this on a broad interpretation of Art. 41 (1) CDR, according to which the term “utility model” mentioned there also included international patent applications under the PCT, because according to the definition in Art. 2 (ii) of the PCT a reference to “patents” was to be understood as also referring to utility models. However, according to the EUIPO, this broad interpretation could not affect the duration of the statutory priority period of 6 months, so that the priority of a patent application under the PCT must also be claimed within 6 months (GCEU, loc. cit., para. 20).
In the appeal proceedings before the GCEU, the EUIPO now took a narrower view, according to which the lack of mention of a patent application in Art. 41 (1) CDR did not constitute an unintended gap in law but reflected the decision of the Union legislator to limit priority claims for RCDs only to earlier designs or utility models. It was clear from the wording of Art. 41 (1) CDR that it defined both the types of industrial property rights on which a priority claim could be based, namely an earlier design or utility model, and the length of the period within which such priority could be claimed, namely 6 months from the date of the first application. The fact that this provision does not refer to patent applications must be understood as an intentional exclusion of such applications (CJEU, loc. cit., para. 8 f.).
4. With regard to the priority period which, according to the GCEU, results from a patent application in accordance with Art. 4 of the Paris Convention, the GCEU states that the Paris Convention does not contain any express provision with regard to the priority period in a case where the later application is a design, whereas the claim of priority is based on an earlier patent application (GCEU, loc. cit., para. 72). It stated that the Paris Convention did contain a rule in Art. 4. Sec. E, para.1 according to which the priority period determined for the later right was decisive if the later right was a design and the earlier right was a utility model, i.e. 6 months. On the other hand, it was clear from Art. 4 Sec. E, para.2 of the Paris Convention that a patent application could be the basis for claiming a priority right for a subsequent application for a utility model. The question therefore arose as to whether Art. 4 Sec. E, para.1 of the Paris Convention was the only express rule of the Paris Convention for the case of two successive applications in respect of rights to which different priority periods apply, reflected a general rule according to which the priority period resulting from the nature of the later right was decisive or whether, on the contrary, it was an exception to a general rule according to which the nature of the earlier right was decisive for the duration of the priority period (GCEU, loc. cit., para. 73 et seq.).
The GCEU agrees with the latter view and states that it follows from the logic inherent in the priority system that the duration of the priority period is generally determined by the nature of the earlier right. This is due to the fact that Art. 4 Sec. C, para.1 of the Paris Convention provides for a longer priority period of 12 months for patents and utility models than for designs, because patents and utility models are more complex. Since, as a consequence, the registration procedure for patents or utility models took longer than for designs, there was a risk that the priority right resulting from the application for a patent or a utility model would lapse if the same relatively short period of 6 months was applied to all rights which could give rise to a priority right. However, the priority right was intended to give the applicant the opportunity to assess the chances of success of an application for the invention in other countries, for which a longer period was necessary in the case of patents and utility models (GCEU, loc. cit., para. 77).
In addition, according to the GCEU, it appeared consistent that the nature of the earlier right determined the duration of the priority period, because the filing of the earlier right gave rise to the priority right. If the creation of the priority right itself and the beginning of the priority period depended on the earlier right and its application, it was logical that the duration of the priority right also depended on the earlier right. On the other hand, there was no reason to assume that the duration of the priority right generally depended on the later right (GCEU, loc. cit., para. 78).
The exceptional character of Art. 4 Sec. E, para.1 of the Paris Convention had historical reasons and took into account the different duration of the registration procedures for patents and utility models, because utility models were registered and published after a short formal examination, whereas patent applications were generally published only after the expiry of a priority period of 12 months (see GCEU, loc. cit., para. 82 et seq.).
Against this background, the GCEU held that with regard to the situation in which the first application for a patent was followed by the application for a RCD, there was no risk that a patent which had been published for a long time would be re-applied for as a design, so that the purpose of Art. 4 Sec. E, para.1 of the Paris Convention did not apply to a patent application. Consequently, for claiming the priority of a patent application in the case of a RCD application, Art. 4 Sec. C, para. 1 of the Paris Convention must be applied, according to which the priority is 12 and not 6 months (GCEU, loc. cit., para. 84).
5. Against this, the EUIPO argues before the CJEU that the GCEU did not simply interpret Art. 41 (1) CDR in accordance with Art. 4 Paris Convention, but in fact left the priority provisions of the CDR unapplied and replaced them by Art. 4 Paris Convention. In doing so, the GCEU gave direct effect to Art. 4 of the Paris Convention, which is inadmissible due to the lack of definiteness of Art. 4 of the Paris Convention and violates Art. 45 of the Paris Convention, according to which Art. 4 of the Paris Convention essentially has no direct effect (CJEU, op. cit., para. 10 et seq.).
In addition, the EUIPO argues that the GCEU misinterpreted Art. 4 Paris Convention and that the application giving rise to the priority right must have the same subject-matter as the later application. Only by way of exception does Art. 4 Sec. E, para.1 of the Paris Convention provide that an application for a utility model may give rise to a right of priority for a subsequent RCD application which has a different subject-matter from the earlier application. Therefore, the GCEU’s conclusion that the time limit for claiming priority of a patent application for a subsequent RCD application is 12 months has no legal basis (CJEU, op. cit., para. 11).
The decision of the CJEU will have far-reaching effects on the question of novelty and individual character of a RCD. The longer priority period of 12 months assumed by the GCEU for RCD applications claiming the priority of a patent application could induce companies to file patent applications first in order not to have to take into account the 6-month period for RCDs provided for in Art. 41 (1) CDR. Furthermore, the assumption that the type of prior right is decisive for the length of the priority period could lead to the applicant of a so-called “design patent” in the U.S. possibly benefiting from a 12-month priority period, while RCD applicants would only be granted a 6-month period for a later application for a “design patent”. Furthermore, the grace period of Art. 7 (2) (b) CDR, according to which the disclosure of a design by the applicant during the 12 months preceding the priority date is not taken into account in the substantive examination of the novelty of a RCD, would possibly be extended from 18 to 24 months.
We will keep you informed in our newsletters on how the CJEU will have decided this very practice-relevant question.
