07.05.2021

Twelve instead of six months priority period for EU community designs when the priority claim is based on an earlier international patent application filed under the Patent Cooperation Treaty (PCT) – according to the judgement T 579/19 of the General Court


Basic principles of priority claims are governed by the Paris Convention for the Protection of Industrial Property, which was signed in Paris on March 20, 1883 and which was amended on September 28, 1979 for the last time.

According to this convention any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

The priority of a previous design or utility model application may be claimed. A priority claim based on a previous patent application will in principle be rejected by the European Union Intellectual Property Office (EUIPO). A priority claim can be based on a previous application filed with the United States Patent and Trademark Office (USPTO) only if the subject matter of the previous application relates to a 'design patent', not a 'patent'.

However, the priority of an international application filed under the Patent Cooperation Treaty (PCT) can be claimed, since Article 2 of the PCT defines the term 'patent' in a broad sense that covers utility models.

So far the EUIPO interpreted Article 41 of Regulation 6/2002 of the Council of December 12, 2001 on Community designs in a way that it was not possible to validly claim priority of an earlier patent for a later Community design application.

In the judgement T 579/19 of April 14, 2021, the General Court of the European Union now addressed this issue when priority rights of an international patent application under the PCT are claimed for subsequent Community design applications. The General Court ruled that Community design applications shall be entitled to claim priority of earlier international applications under the PCT.

As far as the duration of the priority term is concerned, the General Court ruled that the duration of this term should be defined by the kind of earlier application, and thus be twelve months for Community design applications that are based on an earlier international patent application under the PCT. This concept would inter alia be supported by an explanatory document of 1903.

While it is appreciated that this might give more freedom to the applicants, it is still highly recommendable to continue observing, in general, the six-month-priority-term for Community design applications in the future.

However, this change may still be helpful in case more flexibility for a priority claim of a Community design application is needed.

Nevertheless, please note, that, as a matter of principle, the previous international patent application filed under the PCT still must be a first filing when claiming priority for European Union Community designs.