Get your priorities straight!

Many applicants make use of the priority system when filing design applications in more than one country.  This has advantages as it provides more time to decide where to file applications, and delays costs, but can be problematic without fully understanding the system and keeping up to date with law and practice developments.

When claiming priority, an applicant can file a first application, often at relatively low cost, in their home country, and follow it up six months later with one or more further applications in other “Paris Convention” countries that claim priority from the first.  Advantageously, these are treated as if they too were filed at the same time as the earliest application, giving the applicant time after the initial filing to work out where it is worth spending money on design protection.

The law requires that the applicant named for the second application(s) is the same as that on the original application, or that the rights have been properly transferred to the former.  If this is not the case, the second application may be considered to be filed improperly, and the priority claim lost.  In some situations, that may result in the whole application being invalid.

Issues such as these are well known, but often overlooked since, in reality, such formalities are not always checked in detail.  However, European Community Registered Design applications are increasingly presenting challenges when it comes to claiming priority.

The Office for Harmonization in the Internal Market (OHIM) issued new guidelines recently, one consequence of which is a more thorough examination of priority claims made in European design applications.  There has been a crackdown on checking if the applicant is the same as that named in the earlier application.  If not, objections are raised meaning that registration is on hold until suitable evidence of the applicant’s identity and/or eligibility to file is provided.  Simply comparing the applicant for the priority document with that for a European applicant may not give the whole story.  In the US, for example, it is common to file first national applications in the names of the individual inventors/designers, and to later assign the rights to a company.  In this event correct succession exists, but the simplistic comparison OHIM performs does not identify this.

As such, before OHIM started checking priority in more detail, applications used to be a lot more likely to proceed straight to registration, and were consequently cheaper.  Now, it is beneficial, and necessary, to consider these matters in advance to avoid delays and increased costs and issues.  Having good, local knowledge and experience can, however, help smooth the application and registration process.

Another example of the challenges of claiming priority relates to international or Hague designs.  Hague applications ultimately have to comply with local requirements for each country designated in the international application and most, if not all national offices will in theory at least need a copy of the priority application to be filed.  Somewhat inconveniently, the office that handles Hague design applications, WIPO (the World Intellectual Property Office), has no mechanism for receiving priority documents, and shows little interest at all in them.

Some offices, however, such as the Japanese and Korean intellectual property offices (JPO, KIPO), stringently examine design applications, and require a certified copy of the priority document to be filed if the application is to proceed to registration.  Also inconvenient is that seemingly none of the offices takes responsibility for advising on the deadline for filing it.  Knowing, monitoring and meeting the deadline is down to the applicant or his representative.  As it is possible for a single international application designating numerous countries to be filed at one intellectual property office, without involvement from local attorneys until later on, such issues may take some time to come to light.

These challenges will remain until such time – if it happens – when national patent offices and WIPO provide a more harmonised approach to international design protection.  In the meantime, it’s a case not only of what you know, but also who you know (and what they know!)  If you have any questions, please contact Carrie Johnson or your usual Barker Brettell attorney.