Exotic priority

Today’s post will be quite exotic. All right, let’s not overpromise; not quite Seychelles-exotic. But exotic nonetheless, for this blog at least.

For starters, the decision reported on was brought to my attention by my German colleague Frank Steinbach, from the law firm Zimmermann & Partner. Besides, the decision is a judgment issued by the General Court of the European Union, further to an appeal against a decision by a Board of appeal of the EUIPO (European Union Intellectual Property Office).

Not exactly my comfort zone, and yet this decision does belong on this blog. As you will see, it also has a strong patent law flavor.

Here are the – highly unusual – facts of the case.

On October 26, 2017, the German company The KaiKai Company Jaeger Wichmann GbR (hereafter KaiKai) filed a PCT application No. PCT/EP2017/077469 on a sports device for supporting a handlebar for performing push-ups. Approximately one year later, on October 24, 2018, KaiKai filed a multiple community design application for 12 designs, on a sports device, claiming the priority of the PCT application.

The EUIPO examiner refused to acknowledge the priority right, as the community design application was filed after the expiry of the 6-month priority community design deadline. The applicant requested an appealable decision, which was issued on January 16, 2019. KaiKai filed an appeal, and the decision was issued on June 13, 2019 by the Board of appeal of the EUIPO.

At this point, let’s marvel for a moment at the swiftness of soft IP procedures. For a patent person, it looks almost preternatural.

Anyway, the Board agreed with the examiner and rejected KaiKai’s appeal. KaiKai did not waver and filed a further appeal in front of the General Court of the European Union, which gave rise to the decision commented upon today.

Is this a sports-related patent application or design right application?

Before we continue, we should probably have a look at the relevant legal provisions, both in the Paris Convention and in Council Regulation (EC) No. 6/2002 of December 12, 2001 on Community designs (the Community design regulation).

Let’s start with Article 4.A.(1) of the Paris 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 periods in question are specified in article 4.C.(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.

But then article 4.E.(1) contains the following specific provision:

Where an industrial design is filed in a country by virtue of 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.

Turning next to the Community design regulation, the relevant part is article 41(1):

A person who has duly filed an application for a design right or for a utility model in or for any State party to the Paris Convention for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application.

It is important to note here that article 41 does not mention the possibility to claim priority from a patent application, only from a utility model application.

The Board of appeal of the EUIPO held that article 4 of the Paris Convention applies to the European Union, via the TRIPS agreement. However, the Board added that there is no primacy of the Paris Convention over the Community design regulation, since the latter is not a “special agreement” as provided in article 19 of the Paris Convention.

The Board then held that article 41 of the Community design regulation unambiguously sets a 6-month priority deadline from the first filing, which can be an application for a design right or a utility model.

Referring to the Guidelines for examination of registered Community designs (section 6.2.1.1), the Board found that it is not possible to claim priority from a patent application. However, a PCT application can be considered as a utility model application, by virtue of article 2.(i) PCT: “references to an ‘application’ shall be construed as references to applications for patents for inventions, inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition“. Therefore, according to EUIPO practice, claiming priority to a PCT application is allowed. But then, it is considered as an application for a utility model, so that the 6-month priority deadline must be observed.

The Board finally added that this is consistent with article 4.E.(1) of the Paris Convention, which provides a 6-month priority deadline when an industrial design application claims priority to a utility model application.

In front of the General Court, KaiKai criticized the Board’s reasoning as follows:

  • Article 41 of the Community design regulation does not explicitly handle a priority claim to a PCT application.
  • Therefore, the Paris Convention should be applied, and more specifically article 4.C.(1) which provides a 12-month priority deadline for patent applications.
  • Indeed, a PCT application cannot only be considered as a utility model application.

What was the General Court take on this?

As a first step, the General Court approved the EUIPO and the Board for acknowledging that a Community design may claim priority to a PCT application despite the absence of mention of patent applications in article 41 of the Community design regulation.

Indeed, a PCT application can, in some contracting states, be considered as a utility model application. Says the court (my own translation, since the ruling is available in many languages but not in English):

In these circumstances, in order not to unjustifiably exclude some of the utility model applications, the EUIPO’s extensive interpretation allows all international patent applications filed under the PCT to be accepted as a basis for a right of priority, thus avoiding impeding the legal protection of industrial property rights covered by the PCT. While international patent applications may thus give rise to a priority right for designs under Article 41 of Regulation No 6/2002, however, this does not necessarily transform patent applications into model utility applications or automatically subject them to the rules designed for them.

As a second step, the court noted that article 41 of the Community design regulation does not contain any provision on the priority deadline for a priority claim to a patent application.

Looking at the Travaux préparatoires and at the wording of article 41 itself, the court found that the purpose of this article was to conform to the rules of the Paris Convention and the TRIPS agreement. Therefore the Paris Convention should be taken into account when interpreting article 41 of the Community design regulation. The court added that this is not really a matter of primacy of the Paris Convention over the regulation, but rather a matter of filling a gap in the regulation owing to the Paris Convention.

This led the court, as a third step, to look more closely at the articulation between article 4.C.(1) (12-month priority deadline related to patent and utility model application filings) and article 4.E.(1) (6-month priority deadline for an industrial design claiming priority to a utility model application filing) of the Paris Convention:

It follows from the logic inherent in the priority system that, as a general rule, it is the nature of the earlier right which determines the duration of the priority period. In this regard, it should be noted that the reason why […] the priority period applicable to patents and utility models is longer than that applicable to designs and trademarks results from the more complex nature of patents and utility models. In fact, given that […] the procedure for the registration of patents or utility models is longer than that of designs or trademarks, the priority right resulting from the filing of a patent or utility model application would run the risk of expiring if the same relatively short period of six month was applied to all rights that could give rise to a right of priority. However, the advantage that the right of priority is supposed to provide is to allow the applicant to assess the chances of obtaining protection for the invention concerned on the basis of the earlier patent application filed in a state before possibly seeking, by a subsequent application, to obtain protection in another state by carrying out the necessary steps and preparations and by setting out the costs and formalities relating thereto.

[…]

In addition, it appears consistent that the nature of the earlier right determines the duration of the priority period, since […] it is the application for registration of this earlier right which gives rise to the right of priority. Furthermore, it is from the date of filing of the said application that the priority period begins to run. If the actual birth of the right of priority as well as the start of the period of said right depend on the earlier right and the application for its registration, it is logical that the duration of the right of priority also depends on the earlier right.

The court also reviewed the Travaux préparatoires of the Paris Convention which seem to confirm this view.

But then how should we deal with article 4.E.(1)? Well, the court interpreted this article as being a specific, exceptional provision – based on a textual analysis of the article and based on a historical analysis of the adoption of the article. They considered that the reason for the exception was the short registration procedure for utility models. In particular, utility models are generally published before the 12-month milestone – but patent applications are not:

[…] the objective behind Article 4, Section E, paragraph 1 of the Paris Convention does not concern patent applications. Indeed, the risk of a long-published patent being re-filed as a design is almost non-existent, as is confirmed by the present case […]. 

This finally brings us to the court’s conclusion:

It must be noted that the arguments that the EUIPO puts forward in support of the contrary position are not such as to call into question the conclusion that the general rule underlying the Paris Convention is that the nature of the earlier right is decisive for determining the duration of the priority period. In particular, the EUIPO does not make any argument that could establish that the special rule created for utility models should also apply to patents.

Consequently, it must be concluded that the Board of Appeal erred in considering that the time limit applicable to the claim by the appellant of the priority of the international patent application PCT/EP2017/077469 for all twelve designs for which it applied for registration was six months.

Congratulations to Frank and his colleagues, for this nice result! The matter may still be referred as a last stage to the highest level, namely the Court of justice of the European Union – wouldn’t it in fact be surprising if this were not the case?

Now, assuming that this ruling holds, how far-reaching is it? Is it now possible to file a Community design, claiming priority to a patent application other than a PCT application, within a 12-month deadline? This is actually not so clear based on the judgment.

Indeed, the court seemed to approve the EUIPO’s practice to consider a PCT application to be a proper basis for a priority claim by a Community design, because a PCT application can also be considered as a utility model applications. If this is so, the reasoning would not necessarily extend to other patent applications (for example to a direct European application, or a national application). And yet, a patent application is a patent application, PCT or no PCT…

Furthermore, it seems somewhat far-fetched to consider that priority based on a PCT first filing may be claimed because said first filing is (at least virtually) a utility model application, but then, for the purpose of computing the deadline, to consider this first filing as a patent application, and thus to skip article 4.E.(1) which sets a special rule for claiming priority to a utility model application.

Wouldn’t things be more consistent if all patent applications gave rise to a 12-month priority right for design rights, based on articles 4.A.(1) and 4.C.(1) of the Paris Convention? This would require taking the “filling the gaps in the regulation” approach one step further. Would it be one step too far for the Court of justice?

Let’s stay tuned!


CASE REFERENCE: General Court of the European Union, April 14, 2021, The KaiKai Company Jaeger Wichmann GbR v. EUIPO, T-579/19.

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