Recently a colleague asked whether a second Hague application (international design application) can claim priority from a first Hague application. This is a very interesting question. The answer is yes, it can, under certain circumstances, as I will explain.
The starting point for the analysis is, of course, Article 4 of the Paris Convention. Article 4 says an application filed in a second office can claim priority to an application filed in a first office, so long as certain conditions are satisfied.
It is then perhaps helpful to consider how it would work if the two applications were PCT applications. A first PCT application could be filed, and within one year a second PCT application could be filed. It would be possible to establish a Paris priority claim from the second PCT application back to the first PCT application, so long as applicant in the second application is the same as the applicant in the first application, or a successor in title.
For this to work, it would be necessary that the second PCT application have at least one designation that is non-identical to at least one designation in the first PCT application. Saying this another way, if each of the PCT applications were to have only a single designation, and if the two designations were identical, then the Paris Convention would be inapplicable. Paris only applies to international situations, not purely domestic situations. (If each of the PCT applications were to have only a single designation, and if the two designations were identical, then the relationship between the two applications would be purely domestic, a relationship subject not to Paris but to the domestic law of that designated Office.)
PCT Rule 4.10(a)(v) explicitly makes reference to the possibility of a second PCT application claiming priority to a first PCT application.
The alert reader will note that it would be most unexpected for a PCT application to have only a single designation. Under the PCT rules, whenever one files a PCT application, all possible designations are automatically designated. It would require a positive act by the filer to “undesignate” (say) 151 designations. In general one would not expect a filer to do such a thing.
The alert reader will appreciate that there is at least one more way that two such PCT applications could be connected, assuming that the parent and child each designate the US. In such a case 35 USC § 120 could be pressed into service, permitting the second application to be styled as a continuation, divisional, or continuation-in-part of the first application. Notably such a connection would not require the filing dates to be within a year of each other; mere copendency suffices.
Now we can turn to the Hague question. For the Paris priority claim to work, the two Hague applications would need to have been filed within six months of each other, and and it would be necessary that the applicant in the second Hague case be the same as the applicant in the first Hague case (or a successor in title).
Again, importantly, it would be necessary that the second Hague application have at least one designation that is non-identical to at least one designation in the first Hague application.
One must be cautious at this point in the analysis, because Hague and PCT differ greatly so far as designations are concerned. With Hague, each designation costs money, and so It would be pretty rare that a Hague filer chooses to designate (for example) all possible designations. Indeed it is commonplace for a Hague application to make only a handful of designations, and it has probably occasionally happened that a Hague filer makes only one designation.
But assuming that the second Hague application were to have at least one designation that is non-identical to at least one designation in the first Hague application, then yes Article 4 would apply.
Part of how we know that this must work is Hague Article 14 which says:
The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.
A nice person at WIPO tells me that as of the present day, no Hague filer has actually made a Paris claim to a previous Hague application. But it is possible to do so, and I think it is only a matter of time before someone actually does it.
Of course just as with PCT, there is at least one more way that two Hague applications could be connected, assuming that the parent and child each designate the US. In such a case, as with PCT, 35 USC § 120 could be pressed into service, permitting the second application to be styled as a continuation or divisional (but not a continuation-in-part) of the first application. Such a connection would not require the filing dates to be within six months of each other; mere copendency suffices.
As an exercise for the thoughtful reader – can a second Madrid Protocol application claim priority from a first Madrid Protocol application? Assume for sake of discussion that the six-month Paris period is satisfied.