The EUIPO has published new guidelines today for the examination of applications for registered Community Designs claiming priority. Under the previous guidelines, the EUIPO used to examine whether Community Design applications claiming priority met the "substantive" requirements of Article 41 of the Community Design Regulation (EC) No. 6/2002. The "substantive" requirement include, for example, examination of the filing date, country of filing, identity of the applicant, and whether the priority application is the first application for the design. However, although some of the requirements of Article 41 were examined, the EUIPO did not examine whether the priority application relates to same design as the Community Design application itself.
Previously, this has led to some undesirable situations. For example, in some circumstances EUIPO examiners were able to raise objections that they were prevented from being able to review. This often caused problems for Community Design applications claiming priority from a US continuation-in-part application. Typically, the EUIPO would object that the continuation-in-part application is not the first application for the design, and therefore the "substantive" requirements above are not met. However, in reality the continuation-in-part application may relate to a design which, from a European perspective, is entirely different to its parent application. In such situations the EUIPO's objection would be incorrect as continuation-in-part application should be considered to be the first application for the design, and not the parent. However, the EUIPO is not permitted to compare the designs of the US parent and continuation-in-part applications to determine whether they are the same or different designs. As such, under the old guidelines the examiner would be prevented from being able to review their objection, leading to a procedural stalemate. Similar circumstances might also have arisen due to errors in the priority application. For example, where the priority application was the first application for the design but erroneously claimed priority from an unrelated earlier application.
The prohibition against the examination of whether two designs constitute the "same design" only applied to first-instance examination proceedings. Consequently, if the EUIPO maintained its objection, the applicant's only option to resolve the situation would be to file an appeal. In practice, however, some EUIPO examiners have been prepared to withdraw their objections in these situations due to the unfairness to the applicant. However, such resolutions rely on the discretion of the examiner, and are therefore undesirable from the perspective of providing legal certainty.
The new guidelines published today by the EUIPO do away with all "substantive" examination of priority claims during examination and ex partes appeals. The EUIPO will therefore no longer object to the validity of priority claims in any future Community Design applications. This will remove the procedural unfairness for situations such as those described above. However, entitlement to priority will still be examined during inter partes proceedings before the EUIPO, such as for example where this is relevant to establishing the novelty of individual character of a design.
Given that the EUIPO previously did not examine whether all the requirements for a priority claim were met, in practice nothing has changed for third parties where priority is an issue in establishing the validity of a registered Community Design. As such, the proposed changes to the examination of priority claims appear to be generally positive for applicants without adversely affecting third parties.
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