The most important part of a patent specification is … the pictures (at least for design law)
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Marcel Pemsel
Aug 4, 2026, 1:17:24 AM (12 days ago) Aug 4
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The most important part of a patent specification is … the pictures (at least for design law)
Invalidity applicants relying on patent specifications to attack
the validity of an EU design should take note: the General Court has
confirmed that only the specific illustrations actually relied upon as
“earlier designs” are relevant to the assessment of individual character
and not the wider patent disclosure surrounding them. This is the key
lesson from the General Court’s judgment in DecoTrend v EUIPO - B.K.Licht (Abat-jour) (case T-40/25).
Background
In 2017, DecoTrend obtained protection for an EU design containing inter alia the following view:
Background
In 2017, DecoTrend obtained protection for an EU design containing inter alia the following view:
It was registered for “strings of lights” in Locarno class 26‑04 and “lampshades” in class 26‑05.
In 2022, B.K.Licht filed an application for a declaration of invalidity arguing a lack of individual character under Art. 25(1)(b) and Art. 6 Community Design Regulation (“CDR”, now Art. 27(1)(b) and Art. 7 EUDR). It relied on a Swiss patent disclosed on 16 July 1929, which contained the following figure:
The invalidity applicant also invoked a US patent containing the following representation published on 20 December 1927:
The
Cancellation Division of the European Union Intellectual Property
Office (“EUIPO”) dismissed the invalidity application. The EUIPO’s Board
of Appeal (“BoA”) upheld B.K.Licht’s appeal and remitted the case back
to the Cancellation Division. DecoTrend filed an action with the General
Court.
The General Court’s decision
The judges dismissed the action.
1. DecoTrend argued that the patent specifications invoked by B.K.Licht not only contained the pictures shown above but also other illustrations and written descriptions of the inventions. An earlier right invoked by an invalidity applicant must be considered as a whole and, since patents have been invoked, the trained expert and not the informed user is decisive in determining the overall impression created by the patents. The consequence of these legal principles is, according to DecoTrend, that the patents intended to protect a “foldable light-emitting star” or a “foldable lantern”. The foldability of the stars is not discernable from the pictures shown above, thus the other pictures and written specification must be taken into account in interpreting the patents.
The Court disagreed. It referred to the former Art. 28(1)(b)(v) CDIR (now Art. 2(2)(c) EUDDR), which was applicable due to the filing date of the invalidity application prior to the design reform. This provision required the invalidity application to contain information on, and a reproduction of, the prior designs as well as documents proving the existence of those earlier designs.
Further, the overall impression of “any design” in Art. 6(1) CDR, which has been made available to the public indicates that Art. 6(1) CDR must be interpreted as meaning that the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, determined and identified designs from among all the designs which have been made available to the public previously.
Finally, the judges referred to the definition of “design” in Art. 3(a) CDR, according to which a design is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture [or] materials of the product itself [or] its ornamentation”. The Court concluded that appearance is the decisive factor of a design.
Moreover, a patent protects not the appearance of a product, but an invention, and the illustrations in patent specifications are only examples and show one or more forms of the invention. It follows that the invalidity applicant cannot merely refer to a patent specification but must clearly identify the illustrations it relies on.
On that basis, the Court held that B.K.Licht clearly indicated the pictures in the Swiss and US patent specifications it relied upon in its invalidity application. B.K.Licht did not rely on the patents themselves but on specific pictures contained therein.
The judges also found that the patent specifications do not have to be considered as a whole and that it is not necessary to rely on the perception of the trained expert. Only the pictures invoked by the invalidity applicant are decisive.
The explanations contained in the illustrations were deemed irrelevant. They do not prevent the illustrations from being understood and perceived as a design in the meaning of Art. 3(a) CDR.
2. The judges also rejected DecoTrend’s argument that the BoA was wrong to find that the earlier designs had no indentations and that it was not apparent from the illustrations B.K.Licht relied upon that they were foldable.
The EUIPO argued that this plea was ineffective because the Court’s rejection of the first plea was sufficient to justify the remittal of the case from the BoA back to the EUIPO’s Cancellation Division. The judges disagreed. The Cancellation Division would be bound by the BoA’s reasoning under Art. 60(2) CDR.
However, the Court agreed with the BoA in that the illustrations invoked by B.K.Licht did not show that the earlier designs had indentations or were foldable. While this was stated in the patent specifications, it was not apparent from the illustrations – which are the only decisive circumstance from the patent specifications to be taken into account.
For these reasons, the Court dismissed DecoTrend’s action. The EUIPO’s Cancellation Division will have to take a new decision on the invalidity request.
Comments
1. The decision continues the case law of the Court of Justice of the EU (“CJEU”) in Easy Sanitary Solutions v Group Nivelles and EUIPO where it held that an invalidity applicant must identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design lacks individual character.
As a consequence, invalidity applicants should be as specific as possible about the earlier design(s) invoked. Merely referring to a catalogue or patent specification attached to the invalidity application is not enough. Instead, the relevant picture of the design should be copied in the statement of grounds and the exact page from where it was taken indicated.
2. In the assessment of novelty and individual character, technical features that are not discernible from the designs are irrelevant. Even if any of the stars in the case discussed had the technical capability to change into the Death Star from Star Wars, it would not matter because it is not discernible from the illustrations.
3. The binding effect of remittal decisions should caution the parties to review the BoA’s remittal decision with care for findings that bind the EUIPO’s division when deciding the case again. If such findings are not appealed to the General Court, they become binding for all subsequent instances, including in a second appeal to the BoA and a subsequent appeal to the General Court.
The General Court’s decision
The judges dismissed the action.
1. DecoTrend argued that the patent specifications invoked by B.K.Licht not only contained the pictures shown above but also other illustrations and written descriptions of the inventions. An earlier right invoked by an invalidity applicant must be considered as a whole and, since patents have been invoked, the trained expert and not the informed user is decisive in determining the overall impression created by the patents. The consequence of these legal principles is, according to DecoTrend, that the patents intended to protect a “foldable light-emitting star” or a “foldable lantern”. The foldability of the stars is not discernable from the pictures shown above, thus the other pictures and written specification must be taken into account in interpreting the patents.
The Court disagreed. It referred to the former Art. 28(1)(b)(v) CDIR (now Art. 2(2)(c) EUDDR), which was applicable due to the filing date of the invalidity application prior to the design reform. This provision required the invalidity application to contain information on, and a reproduction of, the prior designs as well as documents proving the existence of those earlier designs.
Further, the overall impression of “any design” in Art. 6(1) CDR, which has been made available to the public indicates that Art. 6(1) CDR must be interpreted as meaning that the assessment as to whether a design has individual character must be conducted in relation to one or more specific, individualised, determined and identified designs from among all the designs which have been made available to the public previously.
Finally, the judges referred to the definition of “design” in Art. 3(a) CDR, according to which a design is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture [or] materials of the product itself [or] its ornamentation”. The Court concluded that appearance is the decisive factor of a design.
Moreover, a patent protects not the appearance of a product, but an invention, and the illustrations in patent specifications are only examples and show one or more forms of the invention. It follows that the invalidity applicant cannot merely refer to a patent specification but must clearly identify the illustrations it relies on.
On that basis, the Court held that B.K.Licht clearly indicated the pictures in the Swiss and US patent specifications it relied upon in its invalidity application. B.K.Licht did not rely on the patents themselves but on specific pictures contained therein.
The judges also found that the patent specifications do not have to be considered as a whole and that it is not necessary to rely on the perception of the trained expert. Only the pictures invoked by the invalidity applicant are decisive.
The explanations contained in the illustrations were deemed irrelevant. They do not prevent the illustrations from being understood and perceived as a design in the meaning of Art. 3(a) CDR.
2. The judges also rejected DecoTrend’s argument that the BoA was wrong to find that the earlier designs had no indentations and that it was not apparent from the illustrations B.K.Licht relied upon that they were foldable.
The EUIPO argued that this plea was ineffective because the Court’s rejection of the first plea was sufficient to justify the remittal of the case from the BoA back to the EUIPO’s Cancellation Division. The judges disagreed. The Cancellation Division would be bound by the BoA’s reasoning under Art. 60(2) CDR.
However, the Court agreed with the BoA in that the illustrations invoked by B.K.Licht did not show that the earlier designs had indentations or were foldable. While this was stated in the patent specifications, it was not apparent from the illustrations – which are the only decisive circumstance from the patent specifications to be taken into account.
For these reasons, the Court dismissed DecoTrend’s action. The EUIPO’s Cancellation Division will have to take a new decision on the invalidity request.
Comments
1. The decision continues the case law of the Court of Justice of the EU (“CJEU”) in Easy Sanitary Solutions v Group Nivelles and EUIPO where it held that an invalidity applicant must identify and reproduce precisely and entirely the design that is allegedly earlier in order to demonstrate that the contested design lacks individual character.
As a consequence, invalidity applicants should be as specific as possible about the earlier design(s) invoked. Merely referring to a catalogue or patent specification attached to the invalidity application is not enough. Instead, the relevant picture of the design should be copied in the statement of grounds and the exact page from where it was taken indicated.
2. In the assessment of novelty and individual character, technical features that are not discernible from the designs are irrelevant. Even if any of the stars in the case discussed had the technical capability to change into the Death Star from Star Wars, it would not matter because it is not discernible from the illustrations.
3. The binding effect of remittal decisions should caution the parties to review the BoA’s remittal decision with care for findings that bind the EUIPO’s division when deciding the case again. If such findings are not appealed to the General Court, they become binding for all subsequent instances, including in a second appeal to the BoA and a subsequent appeal to the General Court.
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