If a design is publicly disclosed before a design application is filed, it can be difficult to gain a certified design and the protection it offers. The grace period allows for public disclosure of a design (under certain conditions) without affecting the enforceability of a subsequent design application in Australia. The grace period will only apply for the 12 month period prior to the priority date of a subsequent design application.
What the grace period covers
The grace period protects those who accidentally publish, or those who were unaware they needed to file for protection before disclosure. For example, a designer who unintentionally publishes a design on social media can still seek protection for it within the 12 month period.
The disclosures must have been made within 12 months before the priority date of the subsequent design application.
The grace period came into effect on 10 March 2022 and only applies to applications filed on or after this date, and disclosures that occur on or after this date.
The grace period does not provide an applicant with an earlier priority date.
You can file for protection during the grace period if the original disclosure of the design was by:
- The designer or designers;
- The owner of the design where this is someone other than the designer (e.g. an employer, or a successor in title);
- A party authorised by the designer or design owner (e.g. a marketing company releases a publication authorised by the owner); or
- Third parties using the design without their permission (e.g. a third party reviewing the design on their website or social media).
Publications of designs by the following aren’t eligible for the grace period:
- The Registrar of Designs.
- Foreign and international designs offices.
How the grace period works
The owner of the subject design will be required to submit relevant information about the prior publication or use in a declaration.
This relevant information and declaration can be supplied in response to an examination report which has cited design(s) that fall in the grace period.
Alternatively, declaratory information informing the office of when prior publication occurred can be submitted at any time leading up to the examination of the design through the online services portal. The online services portal includes a field where a declaration of prior publication or use can be attached.
The text for a declaration should be inserted into the appropriate IP Australia declaration form, the declaration then signed and submitted. It is always useful for an owner of a design to consider approaching an IP professional especially they have any doubts about what to provide in their declaration.
The types of evidence which may be useful, though not necessarily always required or sufficient, to support a claim that the grace period should apply to exclude prior art include:
- Dated screen captures of earlier publications.
- WayBack Machine screen captures of websites controlled by the owner at the relevant time.
- Declaratory confirmation that the owner at the relevant time controlled the social media account or website at the relevant time of a publication.
- Sales information and marketing plans; this could include dated information about scheduled product launches or other key dates for release of marketing material.
- Screen captures of the social media accounts and histories of administrator(s) or controller(s) of those accounts.
- Copies of internal emails with instructions for staff or external providers; this could include instructions to make designs publicly available on particular dates.
- Information and evidence which establishes that there has been an unauthorised disclosure of the design.
- Photographs or other media, such as news articles corroborating a public availability at a relevant time.
Every case will be assessed on its own facts and where appropriate the Registrar may request more information to establish the applicability of the grace period provision. The most useful information and material will usually that which is clearly dated and clearly showing the design was published on a particular date. The person making the declaration should be a person who would have direct knowledge of the relevant material and events.