Other appeal · Board of Appeal · 2018-01-10

R0591/2017-3

Contested design: 002916247-0001

CDRAppellant: applicant

Outcome

Appeal upheld (reversal)

The contested decision refusing the priority claim is annulled.

Show verbatim operative text

Annuls the contested decision.

CostsNot specified

Applicant · invalidity challenger

TherapeuticsMD, Inc.via PDF extraction

United States (US)

6800 Broken Sound Parkway NW, 3rd Floor, Boca Raton Florida 33487, United States of America

Represented by

Holder · RCD owner

No opposing holder — Other appeal · Board of Appeal.

Article 41(1)Article 41(4)Article 42Article 45(2)(d)Article 46(4)

›Design holder TherapeuticsMD appealed an examiner's decision refusing its priority claim for RCD No 2 916 247-0001 (pharmaceutical capsule), where the examiner held that US application No 29/530,924 was a 'continuation of' an earlier utility patent application and therefore not a first filing.
›The design holder argued that the continuation application had been given a new filing date (22 June 2015), disclosed the entirety of the RCD's five figures for the first time, and thus constituted a first filing under Articles 41–43 CDR; under Article 4(F) Paris Convention, design priority cannot be refused on this basis.
›The Board found that a continuation application in the US is not automatically treated as having the parent's filing date if the design was not fully disclosed in the parent; the US priority application added four new views beyond the single cross-section in the parent patent, was assigned a new filing date, and therefore qualifies as a first filing.
›The contested examiner decision was annulled; the design holder is entitled to claim priority on the basis of US design application No 29/530,924.

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