Priority claims in EU design applications are a murky area where any clarifying decisions by courts or appeal boards are welcomed with open arms by design attorneys. One issue that often arises is attempting to claim priority from a US continuation application. A US continuation application typically contains the same subject matter as its US parent application and its filing date is typically deemed to be that of its US parent application. Until now the EUIPO has immediately rejected any attempts to claim priority from US continuation applications on the basis that they do not establish independent filing dates, contrary to the requirements of the Community Design Regulation and the Paris Convention.
However, in Case R591/2017-3, the Third Board of Appeal of the EU Intellectual Property Office (EUIPO) has indicated that in some circumstances the EUIPO should allow a priority claim from a US continuation application. In reaching its decision, the Board pointed out that it is possible for the US Patent and Trademark Office (USPTO) to not allocate a US continuation application with the same filing date as the parent US application, such as where the subject matter between the two differs. In such a case the USPTO will allocate the filing date of the US continuation application as the actual date on which the US continuation application was filed (in the matter at hand this status was indicated on the priority document filed at the EUIPO). The Board considered that a priority claim to such a US continuation application is allowable.
It is clear from the outcome of the case that the EUIPO can no longer reject claims to priority from US continuation applications out-of-hand. However, it is slightly unclear whether the EUIPO must now check the subject matter of the US parent application and US continuation application to decide if the US continuation application warrants a separate filing date, or if such an indication should only be made based upon the USPTO’s examination of the matter. At the time of writing the decision can still be appealed, but we will issue updates if it is.
For the avoidance of doubt, it is still best practice to only claim priority in an EU design application from first-filed US design patent applications containing line drawings. It is not possible to claim priority from any type of US utility patent application.