Can a U.S. design application claim priority of a foreign invention application?

Question

I was always under the impression that inventions, utility models and designs can all claim priority using each other, with the exception that inventions cannot claim priority using a design application.

I just read in a book that U.S. design applications cannot claim priority using a Chinese invention application (can only use Chinese utility or design) and it's driving me crazy trying the find the answer. Does anyone know whether this is true, and if possible, could someone let me know where it says that in the laws and regulations?

Answer 1

The MPEP chapter for design patents provides one section about priority (1504.10 Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) [R-07.2015]):

The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.

The provisions of 35 U.S.C. 119(a)-(d), 172, 386(a) and (b) apply to design patent applications. In order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. Under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172. See 37 CFR 1.55(c). Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e). See 37 CFR 1.55 and MPEP § 213 - 216 for further information concerning the right of priority to a foreign application and the formal requirements applicable thereto. ¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and (b)

Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d), 172, 386(a) and (b). An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within six (6) months from the earliest date on which such foreign application was filed. If the design application is filed within two months from the expiration of the six-month period and the delay was unintentional, the right of priority in the design application may be restored by filing a petition under 37 CFR 1.55(c).

(emphasis added).

If there where other possibilities of claiming priority for a design, I think it would be noted in the MPEP. My conclusion is therefore, that a design patent cannot claim priority from an invention patent (application), as it is no equivalent protection or design patent.

Answer 2

After quite some searching on this rather interesting question, frustratingly I could not find a particular reference for this in US law specifically, nor anything specifically regarding China. However, although it's not a very satisfactory, I could find some basis for this contention through the Paris Convention (which is implemented in US law).

The principle behind claiming priority is set out at article 4(A)(1), which provides:

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

This is silent as to whether priority may be claimed between the different types of IP.

Article 4(E) addresses this, at least in part:

(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.

Thus, art 4(E) makes clear that [utility model]→[design], [utility model]→[patent], and [patent]→[utility model] are permissible. One could reason, therefore, that all other categories (such as [patent]→[design]) are implicitly excluded.

There is some logic to this. A patent application, in principle, should not really contain information about the aesthetic features of a product: a patent is concerned only with the functionality. Why then should a patent application be able to serve as priority for a design application?

However that is all speculation. Hopefully someone else can provide a better answer.

Answer 3

I have a European view on the above problem:

A 2012 book chapter from Dave Musker, a European & UK patent attorney ["The Overlap between patent and design protection"; http://www.beck-shop.de/fachbuch/leseprobe/9780199696444_LP.pdf ] is helpful on this & talks about the interaction between patents and "industrial designs" (design patents in US, registered designs in Europe).

The Musker article says there is case law in the UK and in Australia that neither a UK patent application nor a AU patent application (in that specific case, an AU "petty patent" application) can claim priority from a foreign (non-UK or non-AU) design application [UK Court decision in Agfa-Gevaert AG’s Application, (1982) RPC 441; and Australian court decision in Anchor Wall Systems Inc v Keystone Retaining Wall Systems Inc [1996] APO 33.]

Also, a European patent application cannot validly claim priority from a registered/industrial design application, as decided in EPO case J 15/80 [ARENHOLD/Deposit of an Industrial Design], published as (1981) OJ EPO 213, or [1979-85] EPOR A56, or [1982] ECC 74.

In general, I doubt that design & patent priorities are mutually claimable/interchangeable, except in the US.

However, Article 4E(1) of the Paris Convention does say that where, in an "industrial design" application, you claim priority from a utility model (UM) application, then "the period for priority shall be the same as that fixed for industrial designs" [i.e. 6 months only, NOT 12 months which is usual for UMs]. Thus, certainly you CAN file a design application claiming priority from a UM application. [So - in your case, the question is: is the earlier Chinese application a patent appl or a utility model appl?]

FYI, Implicitly (though not explicitly), Article 4E(1) of the Paris Convention may well also imply that you can claim priority from a design application in a UM application.

From memory, I believe that in a PCT application (which confers patent and UM protection), you can claim priority from a design.

[Warning: The likely interchangeability / inter-claimability of design and UM priorities probably causes a danger, because you must claim priority from the FIRST application disclosing the relevant subject matter, which may be either a design filing or a UM filing (the latter including a PCT application) ...]

Hope this helps. All the best, Tony Breen (Dr) European and UK patent attorney European design attorney 17 Sept 2017