Conventional Priority of an Industrial Design in Russia – National and International Procedure

For Russian and foreign applicants, patenting of an industrial design in Russia is possible by filing a national application with Rospatent, filing an international application under the Hague System, filing an application with the Eurasian Patent Office.

In this article, we will consider one of the aspects of the procedures for registering an industrial design under the national and international system – the conventional priority of an industrial design.

Priority is the date of submission of the very first application. Subject to the conditions discussed below, another application for the same subject matter may claim priority on the filing date of the original application. Claiming priority allows you to specify an earlier filing date in other countries, having an initial application in one of the States Parties to the Paris Convention, thereby getting ahead of third parties.

Let us consider the main provisions of the legislation regarding the claim of conventional priority in the registration of an industrial design under the national and international procedure.

National procedure

According to the national procedure, the priority aspect of an industrial design is regulated by Articles 1381, 1382, 1383 of the Civil Code of the Russian Federation.

According to Article 1381 of the Civil Code of the Russian Federation "Establishing the Priority of an Invention, Utility Model or Industrial Design":

1. The priority of an industrial design shall be established by the date of filing of an application for an industrial design with the Federal Executive Body in the Field of Intellectual Property.
2. The priority of an industrial design may be established by the date of receipt of additional materials, if they are executed by the applicant as an independent application, which is filed before the expiration of the three-month period from the date of receipt by the applicant of the notification of the Federal Executive Body in the Field of Intellectual Property about the impossibility to take into account the additional materials in connection with their recognition as changing the essence of the claimed decision, and provided that that as of the date of filing such an independent application, the application containing the said additional materials has not been withdrawn and has not been recognized as withdrawn.
3. The priority of an industrial design may be established by the date of filing by the same applicant with the Federal Executive Body in the Field of Intellectual Property of an earlier application disclosing this industrial design, provided that the earlier application has not been withdrawn, recognized as withdrawn and the state registration of the industrial design has not taken place in the relevant register as of the date of filing of the application in which priority is claimed. And at the same time, the application for an industrial design was filed within six months from the date of filing of the earlier application. When filing an application in which priority is claimed, the earlier application is considered withdrawn. Priority may not be established from the filing date at which the earlier priority was already claimed.
4. The priority of an industrial design in a divisional application shall be established by the date of filing by the same applicant with the Federal Executive Body in the Field of Intellectual Property of the initial application disclosing this industrial design, and if there is a right to establish an earlier priority in the initial application, by the date of this priority, provided that as of the filing date of the divisional application the original application for the industrial design has not been withdrawn or recognized as withdrawn and a divisional application is filed before the possibility provided for by this Code to file an objection to the decision to refuse to grant a patent under the initial application has been exhausted, or before the date of registration of the industrial design, if a decision to grant a patent has been taken in respect of the original application.
5. The priority of an invention, utility model or industrial design may be established on the basis of several applications filed earlier or additional materials thereto, subject to the conditions provided for by Items 2, 3 and 4 of this Article and Article 1382 of this Code, respectively.

According to Article 1382 of the Civil Code of the Russian Federation "Convention Priority of an Invention, Utility Model and Industrial Design":

1. The priority of an industrial design may be established by the date of filing of the first application for an invention, utility model or industrial design in a State party to the Paris Convention for the Protection of Industrial Property (Convention priority), provided that the application for an industrial design is filed with the Federal Executive Body in the Field of Intellectual Property within six months from the specified date. If, due to circumstances beyond the control of the applicant, the application for which conventional priority is claimed could not be filed within the specified time limit, this period may be extended by the Federal Executive Body in the Field of Intellectual Property, but not more than for two months.
2. An applicant wishing to exercise the right of conventional priority in respect of an industrial design application shall notify the Federal Executive Body in the Field of Intellectual Property thereof before the expiry of two months from the date of filing of such application and submit a certified copy of the first application referred to in Item 1 of this Article before the expiry of three months from the date of submission to the said federal body of the application for which the Convention priority is claimed.

If a certified copy of the first application is not submitted within the specified time limit, the right of priority may nevertheless be recognized by the Federal Executive Body in the Field of Intellectual Property at the request of the applicant filed with that Federal Executive Body before the expiry of the said time limit. The request may be granted provided that a copy of the first application is requested by the applicant from the Patent Office to which the first application is filed, within eight months from the date of filing the first application and submitted to the Federal Executive Body in the Field of Intellectual Property within two months from the date of its receipt by the applicant.

According to Article 1383 of the Civil Code of the Russian Federation "Consequences of the Coincidence of the Priority Dates of an Invention, Utility Model or Industrial Design":

If, in the course of the examination, it is established that different applicants have filed applications for identical industrial designs and these applications have the same priority date, a patent for an industrial design may be granted only for one of such applications to a person determined by an agreement between the applicants.

Within twelve months from the date of dispatch by the Federal Executive Body in the Field of Intellectual Property of the relevant notification, the applicants shall inform this federal body of the agreement reached by them.

When a patent is granted for one of the applications, all the authors indicated in it are recognized as co-authors in respect of identical industrial designs.

In the event that applications for identical industrial designs having the same priority date are filed by the same applicant, the patent shall be granted on the basis of the application chosen by the applicant. The applicant must inform about his choice within the time and in the manner provided for by the second paragraph of this paragraph.

If, within the established time limit, the Federal Executive Body in the Field of Intellectual Property does not receive from the applicants the said message or request for extension of the established time limit in the manner provided for by Item 6 of Article 1386 of this Code, the applications shall be deemed withdrawn.

International procedure

Under the international procedure, the priority aspect of an industrial design is regulated by Article 4 of the Paris Convention, the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act of July 2, 1999) and the Regulations under the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs. If you have any questions, you can also refer to the Hague System Guidelines published on the website of the International Bureau of WIPO (hereinafter referred to as the IB WIPO).

Under Article 4 of the Paris Convention, a Hague application may claim priority on an earlier application. Priority may be claimed on the basis of the filing of the first application made in one of the States Parties to the Paris Convention or in any Member State of the World Trade Organization. In addition, since an application for an international design registration may be the first application filed under the Hague System, it may also in itself give rise to a priority claim in a subsequent national, regional or international application. Priority may be claimed for one or more previously filed applications. The IB of WIPO shall not take into account any priority claimed on a date that is more than six months earlier than the filing date of the international application and shall inform the applicant accordingly.

The IB of WIPO does not require a priority document if the applicant claims priority on a previously filed application. Consequently, the priority document should not be submitted together with the international application. Notwithstanding this, several Contracting Parties (including the Russian Federation) indicated that, under their national law, the priority document was always submitted to their Offices in support of priority claims.

If the Russian Federation is indicated in the international application for an industrial design, then within three months from the date of publication of the international registration in the Gazette, a priority document must be submitted to the Federal Service for Intellectual Property (Rospatent) in support of the priority claim. If the priority document is not submitted within the said three-month period, the priority claim shall not be taken into account. In the case of Russia, the priority document must be accompanied by a covering letter indicating the international registration to which the document relates.

A practical example

An international application for the registration of an industrial design has been filed under the Hague System, the basic application has been filed in the European Union. The international application indicates Russia and also claims priority on the filing date of the initial application in the EU. In such a situation, the applicant must monitor the date of publication of the international application in the IB WIPO. Once the international application is published, within three months. From the date of publication, a cover letter must be filed with Rospatent through a Russian patent attorney indicating the international registration number and a certified copy of the original application for which priority is claimed. The EU Office issues such a document either in paper form (if the original application has not been published, i.e. the applicant has postponed publication) or electronically (if the original application has been published). It is advisable to provide a simple translation of the certified copy of the original application into Russian so that there are no additional requests from Rospatent.

Depending on the chosen way – filing an application for an industrial design under a national or international procedure, it is necessary first of all to correctly indicate the information about the date of filing and the number of the initial application, to carefully monitor the deadlines for submitting a priority document to Rospatent. In addition, we recommend that the priority document be translated into the language to which the document is submitted to the Office of the country in question.