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11th Designs Liaison MeetingAlicante

19 – 20 November 2012

Item 12. Priority claims:

Notion of “same design or utility model”

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Paris Convention for the Protection of Industrial Property

Article 4A.(1) Any person (or their successor in title) who has filed an

application… in one of the countries of the Union… shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

(2) Any filing … equivalent to a regular national filing under the domestic legislation… or under treaties concluded between countries… shall be recognized as giving rise to the right of priority.

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Registered Designs Act 1949

s.14 Registration of design where application for protection in convention country has been made

“(1) An application for registration of a design or designs in respect of which protection has been applied for in a convention country may be made in accordance with the provisions of this Act by the person by whom the application for protection was made or his personal

representative or assignee.”

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Paris Conventionfor the Protection of Industrial Property

Article 4D(1) Requires a declaration indicating the date of the filing from which priority

is claimed and country in which it was made.

(3) Countries may require a copy of the application (description, drawings, etc.) previously filed, Certified as correct, Shall not require any authentication, May be filed without fee, Can be filed within three months of the subsequent application, May be required to provide a certificate showing the date of filing,

(5)Shall provide the number of the filing from which priority is claimed

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Convention Priority in the UK Rule 7.

The application (for convention priority) shall contain a declaration specifying:

The date of making of each convention application; The country it was made in or in respect of.

Has 3 months from the date of application to file a copy of the representation of the design that was the subject of any convention application.

The Registered Designs Rules 2006

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Convention Priority in the UK Rule 7 requires a copy of the representation either:

Certified by the authority with which it was filed;

or

Verified to the satisfaction of the registrar.

May require a translation of all/part of a document if provided in a language other than English or Welsh.

The Registered Designs Rules 2006

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Convention Priority in the UK

Change of Practice: Designs Form DC1.

Information on this change can be found at http://www.ipo.gov.uk/pro-types/pro-design/d-law/d-dpn/d-dpn-109.htm

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Paris Convention for the Protectionof Industrial Property

Article 4A.

(2) Any filing … equivalent to a regular national filing under the domestic legislation… or under treaties concluded between countries… shall be recognized as giving rise to the right of priority.

(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.

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An industrial design protects the appearance of whole or a part of a product….

US Design Patent USD670286 S1

A Design Patent protects the ornamental appearance of a functional object (product) not its functional features:

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Paris Convention for the Protectionof Industrial Property

Article 4(E)

(1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs;

(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.

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Community DesignsArticle 41 of Council Regulation (EC) NO 6/2002

“A person who has duly filed an application for a design right or for a utility model in or for any state party to the Paris Convention for the Protection of Industrial Property, or other relevant parties, shall enjoy, for the purpose of filing an application for an RCD in respect of the same design or utility model, a right of priority of six months from the date of filing.”

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Utility model

“A utility model is an exclusive right granted for an invention... In its basic definition, which may vary from one country (where such protection is available) to another, a utility model is similar to a patent. In fact, utility models are sometimes referred to as "petty patents" or "innovation patents.“

WIPO: http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

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Utility model

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Patent

… must show an element of novelty, that is, some new characteristic … not known in the body of existing knowledge … or prior art"… must show an inventive step … and must be "patentable"”

WIPO: http://www.wipo.int/patentscope/en/patents_faq.html#inventions

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Drawings submitted for Patent…

US Patent D670,286

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Design + Design Patent = Utility Patent?

“Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.”

“While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.”

Distinction Between Design and Utility Patents - USPTO website

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So what is Article 4(e) of the Paris Convention saying?

Article 4(e)

(1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model….

(2) Furthermore, it is permissible to file a utility model … by virtue of a right of priority based on the filing of a patent application, and vice versa.

A Utility Model can give priority for an Industrial design…OK

A Patent can be used for a Utility model…OK

but…Is a Patent OK for an

Industrial Design?

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Upright vacuum cleaner

Handle for an upright vacuum cleaner

Application Priority document

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Representation filed with application

Representation on Priority Document

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Representation filed with application

Insert the disclaimer:

“No claim is made for the

colour or colours shown”

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Representation filed with application

Representation on Priority Document

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Representation filed with application

Insert the disclaimer:

“Design shown in use for

illustration purposes only”

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ThanksThanks for your attention

AAnny y qquueessttiioonnss??