11 February 2015
A Community design application can be filed with a valid priority claim at a national Patent Office, when the deadline falls on a closed day at said national Patent Office.
The design in suit had a priority period which expired on a normal working day at OHIM. However, the day was a national holiday in Croatia and the application was filed the following day at the Croatian Patent Office, taking advantage of the national holiday to preserve the priority claim.
Initially, OHIM dismissed the priority claim out of hand, on the basis that the application had been filed more than 6 months after the priority date. Reasoned arguments were filed in response, citing inter alia the relevant provisions in Council Regulation (EC) 6/2002, Commission Regulation (EC) 224/2002, the Paris Convention and Article I-4 of the EU Constitution. An appealable decision pursuant to Article 40 CDIR was also requested.
In response, OHIM issued a notice of acceptance instead of an appealable decision. The notice reiterated the loss of priority right, on this occasion indicating that only public holidays in Spain would cause the priority deadline to be carried over to the next working day. In our view this discriminated against applicants outside of Spain and is thus contrary to the founding principles of the European Union.
An appealable decision was once again requested. After a delay of around four months, a communication from OHIM was received, stating that it had “detected” an error and that the priority details had been added. In a phone call, OHIM indicated that the office had changed its practice in view of the arguments submitted in the case in suit. This is clearly a victory for common sense and provides a potential “get out of jail card”. Article 35(1)(b) of Council Regulation (EC) 6/2002 allows EU Community designs to be filed at the national Patent Office of any EU member state, at the choice of the applicant. This is irrespective of the nationality of the applicant. As there are currently 28 EU member states, there is a reasonable chance that there will be a public holiday in at least one country. The dates on which national Patent Offices are closed can be found at http://www.wipo.int/pct/dc/closeddates/faces/page/index.xhtml.
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