EUIPO Streamlines Examination Of Priority For Community Designs Applications

The EUIPO has published new guidelines today for the examination of applications for registered Community Designs claiming priority. Under the previous guidelines, the EUIPO used to examine whether Community Design applications claiming priority met the "substantive" requirements of Article 41 of the Community Design Regulation (EC) No. 6/2002. The "substantive" requirement include, for example, examination of the filing date, country of filing, identity of the applicant, and whether the priority application is the first application for the design. However, although some of the requirements of Article 41 were examined, the EUIPO did not examine whether the priority application relates to same design as the Community Design application itself.

Previously, this has led to some undesirable situations. For example, in some circumstances EUIPO examiners were able to raise objections that they were prevented from being able to review. This often caused problems for Community Design applications claiming priority from a US continuation-in-part application. Typically, the EUIPO would object that the continuation-in-part application is not the first application for the design, and therefore the "substantive" requirements above are not met. However, in reality the continuation-in-part application may relate to a design which, from a European perspective, is entirely different to its parent application. In such situations the EUIPO's objection would be incorrect as continuation-in-part application should be considered to be the first application for the design, and not the parent. However, the EUIPO is not permitted to compare the designs of the US parent and continuation-in-part applications to determine whether they are the same or different designs. As such, under the old guidelines the examiner would be prevented from being able to review their objection, leading to a procedural stalemate. Similar circumstances might also have arisen due to errors in the priority application. For example, where the priority application was the first application...