UK: Get Your Priorities Right! - Proposed Changes To The EUIPO Design Guidelines Explained

Last Updated: 7 September 2018
Article by Jenny Smith

Proposed changes to the European Union Intellectual Property Office's (EUIPO) Design Guidelines have important implications for anyone looking to file a design application. Here, we explain what these changes might mean for you, including the requirements that you must check before submitting a priority claim.

The Guidelines

The EUIPO's Design Guidelines are revised regularly to make sure that they reflect changes in law and practice. Recently, a draft version of the Guidelines was released, giving us a sneak peek at the changes that are expected to come into force this October.

One major change which could affect current practice is the plan to stop the substantive examination of priority claims during the pre-registration procedure.

What is 'priority' and why does it matter?

When you're filing a design application, it's sometimes possible to claim 'priority' from an earlier design application. Claiming priority is useful if a design application is initially filed in a single country before it's realised that the design would benefit from the European-wide protection of a Community design application.

The priority date is linked to the filing date, which is important because it determines the date at which known designs can be considered relevant to the novelty and individual character of a design.

Novelty means that the design has to differ from known designs by more than immaterial details. Individual character means that the design must produce a different overall impression on the informed user compared to designs which are already known.

At the EUIPO, priority can be claimed within six months of the filing date of the earliest design application. This is significant, because if the validity of the design is challenged, the EUIPO will determine which designs were already known using the filing date of the priority application, rather than the filing date of the later application.

What's the current EUIPO practice relating to priority claims?

At present, an application for a Community design application undergoes examination before it's registered. The examination does not examine novelty or individual character — instead it examines details such as the format of the design representations and the validity of the priority details.

Under current practice, if the examination highlights a deficiency, this issue would be raised with the applicant, who would be given the opportunity to correct the deficiency within two months.

What are the proposed changes?

Under the draft Design Guidelines, only the formalities of a priority claim will be examined — not the validity. The formality requirements include:

  • The priority claim must be filed together with the Community design application, or within one month of the filing date.
  • The file number, filing date and country of the previous application must be indicated when claiming priority.
  • A copy of all priority documents must be submitted within three months of either the filing date or receipt of the declaration of priority — along with any translations, where applicable.

The EUIPO will not confirm the validity of the priority claim and will simply publish it 'as claimed'. Under the proposed guidelines, it's therefore possible that a Community design may be registered with an invalid priority claim.

The substantive requirements which must be met for a priority claim to be considered valid under Article 41 of the Community Design Registration will only be examined after registration, during invalidity proceedings. The draft Design Guidelines highlight that this examination will be based on the copies of the priority documents submitted. It's therefore the responsibility of the applicant to submit a copy of the priority documents and, where applicable, translations of them at the filing stage, in order to allow the priority claim to be examined substantively during invalidity proceedings.

If the validity of the priority claim cannot be verified, the priority claim cannot be taken into account for the purpose of the proceedings. The decision on the priority claim can only be appealed together with the final decision on the invalidity proceedings.

Why have these changes been made?

It's likely that this decision was made to speed up the processing of applications. In theory, the proposed changes will save time being spent on the examination of a priority claim for design applications which are never contested.

However — although a faster design registration process might sound advantageous, it does have a drawback. Priority claims will have to be well scrutinised before they are submitted, and some substantive requirements may be harder to check. For example, if a priority claim is submitted for a design in which it's claimed that the later design application has only immaterial differences compared to the priority application, the applicant may risk losing the priority claim if this is later challenged and the designs are found to relate to different designs.

What are the requirements for priority?

Make sure you check (and double check!) the following substantive requirements before submitting your priority claim to the EUIPO:

  • Priority may only be claimed on the basis of a previous application of a design or utility model.
  • The previous application must be a first filing.
  • The Community design must relate to the 'same design or utility model'.
  • The proprietor of the previous application and the applicant of the Community design application must be the same person.
  • Priority must be claimed within six months of filing the first application.
  • The previous application must have been filed in a country where a right of priority can arise.

The draft proposals are expected to be adopted this September, and enter into force in October. We'll provide an update when the final Design Guidelines are available.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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