In general, an application for an industrial design or design patent should be filed at the relevant intellectual property office before the design has been disclosed or marketed to the public. Otherwise, the design will not be considered “new” and may be ineligible for protection.
Some countries operate “grace periods” whereby a designer is given a certain period in which to disclose and commercialise their design without invalidating a later registration. These are usually for a period of six months to a year. For example, in the UK, a designer has a 12-month grace period after disclosure in which to file an application for a design. This can be useful as they enables a designer to market a product and determine demand before incurring the costs of registration.
However, care should be taken when disclosing or marketing a design before filing an application for registration. Grace periods do not protect against all types of disclosures, including those made independently of the designer during this period, and applications should be filed before the design is disclosed if possible. There is no universal “grace period” and so special care should be taken if protection is required in multiple regions. Different countries around the world have different rules about standards of novelty, what counts as a disclosure, who benefits from grace periods and so on. Some countries, such as China, have no “grace period” at all.
The grace period should not be confused with the priority period. After filing in the first country, an applicant has six months from the date of filing in the first country to claim a right of priority in other countries. This gives applicants seeking protection in more than one country time from the date of the first application to determine further countries of interest and file applications. Grace periods do not move the priority date. They simply protect against invalidity caused by certain instances of self-disclosure.
To find out whether a grace period can be used in a particular country, we recommend contacting local attorneys in the relevant country, which we can do on your behalf.
Grace Periods in Key Territories
|12 Month Grace Period||6 Month Grace Period||No Grace Period
(Requires Absolute Novelty)
|Australia (from 10 March 2022)||Brazil||China|
This information is simplified and must not be taken as a definitive statement of the law or practice. Please contact us for more information if applicable.