EUIPO joins WIPO DAS for EU registered design applications

As background, the DAS is a convenient service run by WIPO which allows participating IP offices to effectively electronically share copies of IP applications as applied for. In practice, the service is used in the context of a first IP application (which might be a patent, trade mark, or registered design application) applied for in a first territory which is then used as a priority claim for any second IP application applied for in a different territory. In such situations, and without DAS, it was often necessary to submit a certified copy of the first IP application to the relevant IP office responsible for handling the second IP application, such to support the priority claim back to the first IP application. In contrast, with DAS, the IP offices can access an electronic copy of the first application as applied for between themselves, in a way that obviates the need to submit a certified copy of the first application to the IP office handling the second application.

With the introduction of DAS in respect of EU registered design applications, upon submitting any new EU registered design application, there is now the option to submit any given design(s) from the application to the WIPO’s DAS as part of the initial filing process.

On the basis such a request is made as part of the initial filing process for the given design(s) from the EU registered design application, each of these designs will then be issued with a corresponding DAS code as part of the filing. In that respect, it is be noted that not all of the designs from the EU registered design application will necessarily be provided with the same DAS code.

Any such issued DAS code(s) can then be used at the time when any second registered design application is made, which claims priority from the EU registered design application, such to allow the design registry handling the second registered design application to access an electronic version of the EU registered design application as applied for. In this way, the need to submit a certified copy of the EU registered design application to that latter design registry (so long as it, too, is participating in the DAS scheme) can be avoided.

The introduction of DAS should be particularly helpful when it comes to pursuing any EU registered designs outside the EU before design registries that are similarly participating in the DAS scheme, such as the USPTO in respect of US design patent applications.

Regrettably, this service offering from the EUIPO is only currently available for making copies of EU registered design applications available to DAS. In that respect it is not currently possible to ask the EUIPO to use the DAS scheme to retrieve a priority document in support of a priority claim to an earlier design filing.

In other words, the EUIPO can currently upload EU registered design filings to DAS, but it cannot retrieve priority documents from DAS to support a priority claim in an EU registered design application. Pleasingly however, the intention is that this latter service offering will be made available by the EUIPO later this year.

On a final note, and separate to DAS, the EUIPO continues to provide electronic certified copies of EU registered design applications as applied for, if required. However, such electronic certified copies cannot be requested in respect of EU registered designs which are currently the subject of deferred publication (which is practically often the case at the time when any EU registered design application is being applied for outside the EU, at the end of the six month priority period). Accordingly, in those instances where the EU registered design is currently the subject of deferred publication, to support a priority claim in a second registered design application claiming priority from the EU registered design, it will still be necessary to either use the DAS scheme to support this priority claim, or request a paper certified copy of the EU registered design application as filed from the EUIPO.

Should you have any questions in respect of the above, please do not hesitate to contact the author or your usual D Young & Co designs advisor.