The EUIPO design guidelines provide the latest guidance on designs practice at the EUIPO and are a useful resource for practitioners. The guidelines are revised on a yearly basis – the latest edition entered into force on 1st March 2021, and can be found here.
The guidelines have been revised to provide more comprehensive coverage of the relevant law and procedural aspects of the examination of design invalidity applications.
The revisions include a new section regarding invisible component parts of complex products. According to Article 4(2) CDR, features of a Community design applied to, or incorporated in, a ‘component part of a complex product’, will be disregarded if they are invisible during normal use of the complex product.
The guidelines state that ‘normal use’ is the use made in accordance with the purpose for which the complex product is intended. The case law which is referenced includes known cases such as Heat Exchanger Inserts (20/01/2015, T‑616/13, EU:T:2015:30), which confirms that where none of the features of a Community design applied to a component part (e.g. a sealing ring) is visible during normal use of the complex product (e.g. a heat pump system), the Community design will be invalidated as a whole.
However, Article 4(2) CDR does not require a component part to be clearly visible in its entirety at every moment of use of the complex product. It is sufficient if the whole of the component can be seen some of the time in such a way that all its essential features can be apprehended (22/10/2009, R 690/2007‑3, Chaff cutters, § 21).
The guidelines have also been revised to provide clearer guidance in relation to the facts, evidence and arguments submitted by the applicant. The section regarding lack of novelty and individual character has been restructured but it still includes a useful sub-section regarding specificities of design disclosures on the internet, which sets out selected principles and recommendations from the Common Practice CP10 – Criteria for assessing disclosure of designs on the internet.
Furthermore, the guidelines have been updated to confirm that fax will no longer be used as a means of communication before the Office.
E-filing remains the recommended means of filing documents. However, in case there is a malfunction in the e-filing system, then the Office has made two electronic back-up options available: an upload solution located in the Communications section of the User Area; and a file-sharing solution outside the User Area.
Although not an entirely new feature, the guidelines have been revised in relation to the Office being a participating office in the WIPO DAS system (an electronic system allowing priority documents and similar documents to be securely exchanged between participating IP offices). There is now no need to submit a copy of the priority document if the Office is provided with the application number, the filing date and the country of filing of the previous application together with the WIPO DAS access code at the time of filing the application.
To summarise, key points for those filing designs at the EUIPO are as follows:
- Sections of the guidelines have been revised in relation to the examination of design invalidity applications, including the provision of a new section on invisible component parts of complex products
- E-filing continues to be recommended for filing documents
- Fax will no longer be used as a means of communication
- Applicants can use the WIPO DAS system for filing priority documents at the EUIPO
The Designs team at Carpmaels & Ransford will be happy to assist if you have any questions on the updates, or would like any further advice in relation to filing designs or design invalidity applications at the EUIPO.