Grace Periods for Design Registrations: Considerations for International Portfolios

The law relating to design registration and protection remains disharmonised across jurisdictions, giving rise to complexity for anyone seeking to design protection in those markets. 

This lack of harmonisation is especially apparent in relation to grace period provisions, where some jurisdictions offer a safety net through grace periods, and others take a far stricter approach leaving no room for error. 

In the context of registered design protection, a grace period refers to a statutory exception to the usual novelty requirements, under which certain disclosures prior to the earliest filing date will not be treated as novelty-destroying for a certain period of time.  

The availability, duration, and conditions of grace periods vary significantly between countries. For example, certain countries provide a 12-month grace period, others provide only a six-month period, and some jurisdictions do not recognise any grace period at all.  

Accordingly, an effective international design filing strategy requires careful planning, particularly where there has been any prior self-disclosure, including through product launch activity, public exhibition, promotional or advertising materials and the like.  

In this article, we explore how these inconsistencies can impact international design strategies, highlight key differences across major markets, and outline the practical considerations innovators should keep front of mind to avoid inadvertently jeopardising valuable design rights.  

Examples of Major Markets with 12 or 6-Month Grace Periods 

By way of example, the following major jurisdictions generally provide the following grace periods: 

• * In Hong Kong, protection may be available in connection with disclosure at an official international exhibition only as defined per the ‘Convention on International Exhibitions signed at Paris on 22 November 1928, and any protocols to that Convention, as revised or amended from time to time’ – which limits which exhibits disclosure can be made at while relying on these provisions in Hong Kong.  

• ** In India, the grace period is generally limited to disclosures at certain notified exhibitions, and only where prior notice is given to the Indian IP Office and the application is filed within six months of the first exhibition. 

• *** In Japan, the applicant must notify the Japanese IP Office at the time of filing that reliance on the grace period is sought, and evidence must then be filed within 30 days from filing. 

• **** In South Korea, the applicant must also notify the Korean IP Office of the intention to rely on the grace period, and evidence must be submitted within 30 days from the filing date. 

Major Markets with No Grace Period 

A key example of a major jurisdiction with no design grace period is China. 

This means that any public disclosure before filing may destroy novelty for a Chinese design application. 

This can be particularly problematic given the amount of fast-moving consumer goods, for which design protection is often sought, are manufactured in and exported by China. For businesses intending to commercialise products in China, this can present a significant risk if product images, prototypes, or launches occur before filing. 

However, where design protection is no longer available in China due to prior disclosure, it may be possible to consider utility model patent protection as an alternative, depending on the nature of the product and innovation. 

China’s utility model system can provide protection relatively quickly, often granting within a matter of months without substantive examination, and placing lower threshold inventive step requirements compared to standard patents. However, China’s utility patents offer only 10 years of comparatively less robust protection compared to a standard Chiense patent’s 20 years.  

Utility models can be useful as a short-term protection strategy in China should self-disclosure already have occurred, particularly against copycat products, but should generally not be relied upon as the sole form of patent protection where longer-term rights are commercially important. 

Key Takeaways 

Given the wide range of variation in Grace period provisions across major jurisdictions, international design portfolios should be approached with caution. 

For example, South Korea and Japan require documents to be filed within 30 days of filing but offer different length periods, India limits protection largely to certain exhibitions with prior notice, and China provides no grace period at all.  

Accordingly, relying on a grace period in one country may create a priority position that is not effective in other jurisdictions. 

This is particularly important when considering: 

• any disclosure by the inventor, designer, or business prior to filing a first design application, and 

• filing a first patent application for a corresponding innovation, followed by immediate product disclosure, before filing a first design application.  

Careful portfolio planning is therefore essential before any public disclosure takes place, and Applicants should not assume, for example, that the prior filing of a patent application before disclosure will, of itself, preserve their ability to obtain registered design protection at a later date.  

Accordingly, the timing and sequencing of patent, design, and any related disclosures should be considered as part of an integrated IP portfolio strategy at an early stage, to ensure Applicants preserve priority positions in key markets. 

If you would like guidance on timing, priority strategy, or coordinating design filings across multiple jurisdictions, please contact us.