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Claiming a PCT priority for a Community design

The right of priority is one of the fundaments of industrial property (IP). Basically, it has the effect that a later IP application can benefit from the date of an earlier filing. For a registered Community design (RCD) the right of priority is stipulated in Article 41 of the Community Design Regulation ¹ (CDR) which roots in Article 4 of the Paris Convention².

Where a later RCD claims the priority of an earlier filed application, the subject matter of the earlier application is usually a design. However, an RCD may also claim the priority of an earlier application which is not for a design but for a patent provided the earlier application is made under the Patent Cooperation Treaty³ (PCT). How does it work?

The PCT defines the term “patents” in a broad sense encompassing “patents for inventions, inventors' certificates, utility certificates, utility models, patents or certificates of addition, inventors' certificates of addition, and utility certificates of addition” (Article 2(i) PCT). Therefore, PCT applications cover all the various types of IP rights which fall under this broad definition of “patents” and which exist in at least one Member State of the PCT. One of these Member States is Germany . The German legislation provides for more than one type of IP rights, namely “patents” in a narrow sense and utility models. Patents and utility models in Germany are both thought to protect technical inventions, but with the difference that patents are subject to substantive examinations before grant whereas utility models are only checked for formalities before registration. Another example for a PCT Member State with utility model protection is Malaysia .

The fact that the PCT covers the utility models existing in some Member States and that all the PCT Member States are also members of the Paris Convention explains why a Community design can rightfully claim the priority of a PCT application. The link is explicitly made in Article 41 CDR which says that a priority may be claimed where the earlier application is for “a design right or a utility model in or for any State party to the Paris Convention”.

Consequently, claiming the priority of an earlier PCT application for a later design registration is legal in theory. But does it also make sense in practice? The subject-matter of a PCT application is “an invention”, i.e. a solution for a technical problem abstractly worded in patent claims, whereas “a design” is the appearance of a product shown in graphical representations. Where is the connection?

The connection exists for inventions where the solution for a technical problem is applied in a product and where this product is depicted in the PCT application. An example is RCD 1149819-0002 which claims the priority of PCT/US08/88656 and which relates to earphones. The PCT application includes drawings of the inventive earphones (see below left) showing features of appearance which were later claimed in the RCD (see below right).

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Fig. 1A of PCT/US08/88656 Fig. 1 of RCD 1149819-0002

While the example above demonstrates that claiming a PCT priority for an RCD is more than a theoretical possibility, until now relatively few Community designs have been registered with such a claim. One reason could be simply that this route is not well known. The present article may encourage a more "inventive" use of patents to secure design rights in the future.

¹ Council Regulation (EC) 6/2002 of 12 December 2001 on Community Designs

² Paris Convention for the Protection of Industrial Property of 20 March 1883, available here

³ Patent Cooperation Treaty of 19 June 1970, available here