IP Cases & Articles

WIPO DAS & Designs: EUIPO is an office of second filing

In a welcome announcement, the EUIPO has confirmed that with effect from 12 September 2020, the EUIPO is in a position to retrieve priority documents from the WIPO DAS scheme to support a priority claim in an EU registered design application.

As background, the DAS is a convenient service run by WIPO which allows participating IP offices to effectively electronically share copies of IP applications as applied for. In practice, the service is used in the context of a first IP application (which might be a patent, trade mark, or registered design application) applied for in a first territory which is then used as a priority claim for any second IP application applied for in a different territory. In such situations, and without DAS, it was often necessary to submit a certified copy of the first IP application to the relevant IP office responsible for handling the second IP application, such to support the priority claim back to the first IP application. In contrast, with DAS, the IP offices can access an electronic copy of the first application as applied for between themselves, in a way that obviates the need to submit a certified copy of the first application to the IP office handling the second application.

To date (as reported in our previous article "EUIPO joins WIPO DAS for EU registered design applications", published 14 August 2020) the EUIPO was only able to act as an office of first filing under the WIPO DAS scheme. This meant that the EUIPO was able to upload EU registered design filings to DAS, but was not able to retrieve priority documents from DAS to support a priority claim in an EU registered design application. However, following the above announcement, the EUIPO is now also able to act as an office of second filing in so far as it can now additionally retrieve priority documents from the WIPO DAS scheme to support a priority claim in an EU registered design application (so long as the design registry pertaining to the priority document, too, is participating in the DAS scheme).

In so far as one is able to utilise the WIPO DAS scheme in respect of a priority claim for an EU registered design application, it is to be noted that this does not necessarily obviate the need to submit a translation of the priority document where this is not in one of the languages of the EUIPO (these languages being English, French, German, Italian and Spanish). Accordingly, in the case of using a DAS code in respect of a priority document which is not in one of the languages of the EUIPO (for example, a Japanese registered design application as the priority document), the EUIPO may still request that it is provided with a translation of this priority document into one of the languages of the EUIPO, if this translation is not provided on filing alongside the DAS code. Accordingly, in so far as one has such a translation of the priority document in these instances, it may be advisable to supply this translation when initially applying for the EU registered design, to pre-empt any potential request from the EUIPO to subsequently provide this translation of the priority document.

In all however, the above announcement from the EUIPO will no doubt be extremely well received by all users of its EU design registration system, and provides yet another clear indication from the EUIPO of its continued commitment towards providing a leading design registration system, which is both quick and easy to use.

EUIPO WIPO DAS announcement

A link to the announcement from the EUIPO can be found on the EUIPO website.

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