FICPI, The International Federation of Intellectual Property Attorneys

When Views Get in The Way Of Priority Rights in Design Applications

01st July, 2019

Protecting intangible assets is much more than just law – it is making sure your creations are legally protected wherever you market your product, so that you can get economic return when investing on innovation. When it comes to making your creation scalable to global perspectives, you need to protect your creation in multiple jurisdictions.

Thus, the Paris Convention´s priority right comes into play, that means,  applying for design protection with one of the hundreds of members of the Union, an applicant might request priority application rights within six months from the first filing date in any other jurisdiction that is also a member of the Union. This generally is an easy task, as the majority of countries do not conduct substantive examination on Industrial Designs, but that is not always the case.

The Brazilian Patent and Trademark Office (BPTO) recently released its first Industrial Design Guidelines, which went into force in March 2019. According to this resolution, among other procedures, the BPTO will conduct a technical analysis in order to check whether the application filed in Brazil matches the priority application in every detail.  

This essentially means that, for design applications in Brazil, in case the jurisdiction of origin has different representation protocols for industrial design applications filed in Brazil, it will be much harder to retain the priority right.

In a survey conducted by FICPI in various jurisdictions, it was found that most of the countries do not take into account minimal changes in priority applications’ representations. In fact, this is even expressed in multiple design regulations and guidelines, such as in Europe, Canada, and the United States. Also, in order to preserve design rights and to foster innovation and design protection globally, design owners must be able to have their design protected in different jurisdictions, having their priority rights duly respected.  

Therefore, for the sake of global design protection, it is necessary that countries adopt a procedure that allows priority designs to be registered with their respective priority date in case of substantial similarities between the original and the priority applications, but not demanding identical representations. This will further the global reach of intangible assets and allow the expansion of innovative designs.

Author: Gabriel di Blasi

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