Grace Periods Part 2 – How to use the Grace Period for Designs
Following on from my colleague Hamid’s fantastic article on the availability and timing for grace period filings in relation to design registrations, I thought it would be beneficial to examine the different ways in which these provisions can be triggered and the implications this has when filing international design portfolios.
While grace period provisions can be very useful for preserving the registrability of design rights where public disclosure occurs prior to a first filing, it is important to understand the legal mechanisms by which these provisions are enlivened to ensure the rights aren’t further jeopardised.
Grace Period Provisions in Australia
Looking first at Australia, we can set the scene by contrasting the grace period provisions for designs with those provided for patents. For a patent application to invoke grace period provisions to exclude prior disclosures, a complete application must be filed in Australia (or least designating Australia by way of a PCT application) within 12 months of the first public disclosure. Establishing a priority date by way of a provisional application filed in Australia, or any type of application filed elsewhere, is not sufficient to enliven the grace period provisions for patents. Interestingly, this is different to the mechanism provided for designs. Instead, the grace period is enlivened as long as an Australian design application having an earliest priority date is filed within 12 months of the first public disclosure.
One important caveat to the above allowance is that a prior disclosure by way of publication by a foreign designs office cannot be excluded from the prior art base using the grace period provisions. That is, you cannot use the grace period in Australia to rectify a situation where an Australian design registration is sought outside the Paris Convention priority period in relation to an earlier filed design that has been filed with, and published by, another designs office. Because the prior art is established based on material that has been publicly disclosed/published, it may be possible to mitigate this problem if the Australia application is filed in the intervening period between filing and publication of the earlier overseas design. However, as design applications are very rapidly published after filing in many countries (with the United States and Canada being notable exceptions), this is a risky strategy and not one we recommend relying upon.
Grace Period Provisions Internationally
Many other countries and regions, including Canada, the United States, the EUIPO (which governs European Union countries), Switzerland, Norway and the United Kingdom (which are not part of the EU), use the same rule as Australia for determining whether an application has been timely filed so as to invoke the grace period provisions. However, this is not the case in all countries that offer a grace period and assuming the law is the same everyone could have irreparable consequences.
Notably, Japan and South Korea use a much stricter rule when granting grace for prior disclosures. Both countries require the applicant to file a local application within 12 months of the earliest public disclosure of the design along with a statement detailing the first disclosure. It is not sufficient to simply have a priority date that is within 12 months of the first public disclosure. A local filing date must also be secured within 12 months of the public disclosure in each of those countries.
This distinction is critical.
For example, if an applicant publicly discloses a design, files a first design application in Australia 11 months later, and then seeks to enter Japan or South Korea by claiming priority within the further six-month Paris Convention period, that strategy may be effective in some jurisdictions but ineffective in Japan and South Korea. Although the priority date may fall within 12 months of the disclosure, the local Japanese or South Korean filing date may fall outside that period.
The practical lesson is that grace period analysis cannot stop at the question of whether a jurisdiction has a 6-month or 12-month grace period. It is also necessary to consider how the grace period is triggered, what type of filing is required, whether priority can be relied upon, whether local filing is required, and whether any procedural steps or evidence must be submitted at the time of filing or shortly afterwards.
Take Aways
For international design portfolios, this means that prior disclosure needs to be treated very carefully. Even where grace period protection appears to be available, the filing strategy should be mapped jurisdiction by jurisdiction before any assumptions are made.
The safest position remains to file before disclosure wherever possible. Where disclosure has already occurred, applicants should move quickly, by contacting us so we can advise on the procedures in all commercially relevant jurisdictions, and avoid assuming that a priority claim will preserve design rights in every country of interest.
If you are looking to build an international design portfolio and need advice on grace period provisions, reach out to MBIP via our contact form or by calling +61 7 3369 2226. Our expert team will be happy to help you get your IP secured.
