The introduction of a 12-month grace period to the Designs Act in Australia provides an important safe-guard against the unintended public disclosure of a design – but how does it differ to the grace period for patents? Jenny Wyndham-Wheeler and Radhika Moore provide an overview of this valuable tool.
So you want to protect the shape of your experimental sports drink bottle or the aesthetic of your Y2K nostalgic rollerblades? Don’t disclose too early! Designers and practitioners know any design needs to be distinctive over similar products that have been sold or advertised or simply made public before you file.
Until recently, as soon as you disclosed a product to the public, you were precluded from registering the design for that product. However, in 2021 the Designs Act in Australia was amended, meaning there’s a saving grace.
Grace period for designs
A review of the Australian Designs System was a long time coming. But in 2021[1] the Designs Act [2] was amended[3] to introduce a twelve-month grace period. The grace period applies to registered designs filed on or after, or with a priority date on or after, 10 March 2022.[4] Further, publication or use of a design on or after 10 March 2022 and within twelve months of the priority date are disregarded from the prior art base when assessing whether the design is new and distinctive.
Designers and practitioners welcoming the introduction of the designs grace period may have assumed the provisions would cover the same sorts of circumstances as the grace period under the Patents Act.[5] Although this statement is generally true, there is a notable exception.
The publications and uses which can be disregarded are those made by the registered owners, their predecessors in title and the person who created the design.[6] Unauthorised disclosure (i.e., publication or use without consent of the owner) is also covered by the grace period.
However, to those more familiar with patent law, an interesting exception is that the grace period does not cover publications of a design made by: [7]
- the Australian Registrar of Designs;
- other foreign national IP offices;
- international organisations (e.g. WIPO); or
- regional organisations (e.g. EUIPO).
This means that if your design is published by an IP office, this publication can be used to invalidate a design filed in Australia even if you file within 12 months of publication.
Comparison to patent law
In a similar vein, the Patents Act [8] allows a twelve-month grace period for information made publicly available with or without consent of the nominated person when deciding whether an invention is novel or inventive. The caveat is of course that a complete application must be made within 12 months of the date of publication/use of the information.
Some may be familiar with the Patents Regulations [9], which allows for publication of a patent application by an IP office and subsequent filing of a complete patent application in Australia within twelve months under the grace period. The publication of the relevant patent by an IP office will not form part of the prior art base, and thus publication is covered by the grace period.[10]
We have written in detail about grace periods for patents here.
Why the inconsistency?
When filing in Australia, applicants can claim priority to overseas patent applications lodged in the preceding twelve months. Whereas design applicants can only claim priority to overseas designs applications lodged in the preceding six months.
The shorter Paris Convention priority led legislators to exclude publications by IP offices from the designs grace period.[11] This is to try to prevent applicants from abusing the 12-month grace period, in circumstances where the design applicant should have filed a design application within the 6-month Paris Convention window.
Best practice
Overall, it’s best practice to file an application before disclosing your design or patent. This ensures your own disclosure cannot be used as prior art to invalidate the patent or design. However grace period laws give you the opportunity to file after disclosure, and that can really save you.
How we can help
If you have any questions regarding the grace periods in designs law or patent law, or have any other questions about how best to protect your IP, please do not hesitate to contact Robert, Radhika or you can submit a general enquiry here.
[1] Advisory Council on Intellectual Property (Cth), Review of the Designs System, Final Report (2015) 11.
[2] Designs Act 2003 (Cth) s 17.
[3] Designs Act 2003 (Cth) Endnote 3 (‘Designs Act (Cth)’).
[4] IP Australia, Designs Examiners’ Manual of Practice and Procedure (Web Page, 7 April 2022) (‘IPAU Designs Manual grace period’).
[5] Patents Act 1990 (Cth).
[6] Designs Act (Cth) s 17(1D).
[7] IPAU Designs Manual grace period (n 4).
[8] Patents Act 1990 (Cth) s 24.
[9] Patents Regulations 1991 (Cth).
[10] Patents Regulations 1991 (Cth) Regs. 2.2, 2.2A, 2.2B, and 2.2C.
[11] https://ficpi.org/blog/australian-registered-designs-law-reform-introduction-grace-period-and-other-changes
