Following our post concerning the UK Designs process (see here), we now write about the ability to use grace periods in case of publication of the original designs.
When applying for design registration, for your design to be successful it must be novel, in other words, it cannot have been disclosed to the public before the date of filing the design application. The grace period refers to a time after this public disclosure that you can still file your design at an intellectual property office and retain novelty. Depending on the jurisdiction, the length of the grace period differs.
The grace period for design registration is different to the grace period for patents. For patent applications, most jurisdictions will only offer a grace period for inventions which have been disclosed to the public against the will of the applicant. For example, if the information was leaked by someone who had signed an NDA (Non-Disclosure Agreement). To successfully file your patent application under such a grace period you need to provide proof of the breach of confidence.
Further to the below, we have now gathered some grace period information for a number of countries of regular interest to our clients:
| Country | Grace Period | Notes |
| Australia | 12 Months | For applications filed on or after 10th March 2022 or disclosures that occurred on or after 10th March 2022 |
| Brazil | 180 Days (6 months) | |
| Canada | 12 Months | |
| EU | 12 Months | Disclosure can be a national design registration |
| France | 12 Months | |
| Hong Kong | 6 Months | |
| India | 6 Months | |
| Iran | 6 Months | |
| Japan | 12 Months | |
| Korea | 12 Months | |
| Turkey | 12 Months | |
| China | 0 Months | There is no grace period in China |
| USA | 12 Months | |
| UK | 12 Months |
In conclusion, in a lot of jurisdictions have some form of grace period for design registration. It is important to consider which jurisdictions you will need design protection in before publicly disclosing your design to check if you have a grace period, as well as the length of such a period. Places where you would need to protect your design are for example: where you will manufacture your product, where you will market your product, where you will sell it. A key country to note is China, where there is no grace period for a design registration.
If you are seeking protection in a large number of territories, and wish to defer costs, and/or if you are interested in the grace periods for countries not in the above table, then please do contact us.
Further, grace period information often changes and so must not be taken as a definitive statement of the law or practice in any one country mentioned above. Please contact us for more information.
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