The European General Court (EGC) recently decided that the length of the priority period depends on the type of first filing, if a respective regulation does not provide otherwise.

According to Art. 41(1) of Regulation (EC) No 6/2002 – the Community Design Regulation (CDR) – an application for a design or utility model properly filed in a contracting state of the Paris Convention or of the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) gives a six-month right of priority for the filing of a Community design application. However, the precise wording of the article leaves open the question whether and, if so, with which priority period (international) patent applications establish a right of priority for Community design applications.

In Case T-579/19, the EGC has now decided that all international patent applications filed under the PCT (Patent Cooperation Treaty) are to be accepted as the basis of a priority right when priority is claimed for the filing of Community design applications under the CDR. However, since the priority period resulting from an earlier international patent application under the PCT is not covered by the CDR, the Paris Convention should be consulted as the underlying regulation for the purpose of interpretation and supplementation. According to Art. 4-C(1) of the Paris Convention, the applicable priority period depends on the nature of the right concerned and is twelve months for the patent and utility model, but only six months for the design. Nevertheless, the EGC concluded that it follows from the logic inherent in the priority system that the length of the priority period is determined by the nature of the prior right.

On October 24, 2018, in Case T-579/19, the applicant filed an application with the European Union Intellectual Property Office (EUIPO) to register twelve Community designs, claiming priority for all designs based on an international patent application under the PCT filed with the European Patent Office on October 26, 2017. The EUIPO rejected the claimed priority right on the grounds that the filing date of the international patent application was more than six months before the filing date of the Community designs. This was confirmed by a decision of the Third Board of Appeal (R 573/2019-3), which has now been set aside by the EGC.

For applicants of Community designs, it can be summarized that according to the EGC, international patent applications under the PCT establish a right of priority for Community design applications, in which case the priority period of twelve months according to Art. 4-C(1) of the Paris Convention applies.