Community design applications priority claim assessments

Under the Community design regime, it is possible for a Community design application to claim priority from an earlier registered design application filed no earlier than six months before. This effectively means that the Community design application, in many respects, is deemed to have been filed at the same time as the earlier design application.

With the previous examination regime at the EUIPO, to allow a priority claim in a Community design application, the EUIPO would undertake a fairly detailed examination as to whether any priority claim in the design application was valid.

Following the introduction of a new examination regime however, which came info force on 01 October 2018, during the initial examination of a Community design application, the EUIPO will now only verify that a priority claim:

1. has been timely applied for (within one month from when the Community design application was first filed);
2. contains the file number, filing date and the country of the priority design application;
3. is timely accompanied with a copy of the entire priority design application as filed (typically a copy of a certified copy of the priority design application as filed); and
4. if the priority design application is not in English, French, German, Italian, or Spanish, is further accompanied with a translation of the priority application which allows the EUIPO to verify the information listed in point 2).

Other assessments in relation to whether the priority claim is valid, such as whether the priority application does not itself claim priority from an earlier application, or contains a different applicant to that of the Community design application, which were formerly carried out by the EUIPO during the initial examination process for the Community design application will no longer be performed.

As a result of the above regime change, the intention is that this will allow Community design applications to be examined faster, and with fewer objections, such that they will proceed through to registration more quickly.

Whilst this is likely to be seen as good news for most, the new regime will introduce uncertainties in whether priority claims present in a Community design registration are valid. Care will therefore need to be taken during the assessment of any Community design registration to verify that any priority claims it may purportedly have are indeed valid.

It is to be noted that the new, relaxed, examination regime in respect of priority claims applies only to the examination of a Community design application prior to its registration; any post-grant examination of the priority claims performed by the EUIPO remains unchanged. Such examination may happen, for instance, where a third party wishes to challenge the validity of the design registration. There, the EUIPO will continue to undertake a full, and substantive, examination as to whether the priority claims contained in the design registration are valid.