Recently, we have seen an increasing number of clients fighting against the clock in an effort to try to obtain registered design protection before the grace period expires. The concept of time limits to file an application is probably unfamiliar to those who are more accustomed to dealing with trade mark rights than patents but it is essential that applications are filed on time to ensure they are valid.
What is the Grace Period?
In the UK and the EU, for your design to be validly registered, it must have been novel as of the filing date, meaning that an identical design must not have been made available to the public. The commercial reality is that many design owners do not want to spend money obtaining registered design protection before they have the opportunity to conduct consumer or market trials or to disclose the design for other commercial reasons. In a nod to this commercial reality, legislation allows a grace period of 12 months from the date the designer first discloses the design to file applications which will still satisfy the novelty requirement.
What is disclosure?
Disclosure is essentially any act which makes your design known to a third party. This does not necessarily mean large parts of the public become aware of your design; disclosure to a handful of people outside of your company will be enough to set the clock ticking. Disclosure commonly includes acts such as exhibiting or demonstrating goods at a trade fair or exhibition as well as actually offering the goods for sale.
It is important to bear in mind that disclosure can occur anywhere in the world, it does not need to take place within the UK or the EU to destroy the novelty of a design.
Are there any acts which do not count as disclosure?
A disclosure will not start the grace period in two situations:
- Where the disclosure could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned;
- Where the disclosure was made in confidence for example the disclosure is within the scope of a non-disclosure agreement.
So what should I do?
Our advice is that it is good practice to:
- Make sure all disclosures to third parties during the design, development and testing of new products are made under strict confidence to avoid disclosing your design prematurely;
- Note the exact date of the first public disclosure and let your IP advisor know it;
- Speak to your IP advisor as early as possible about the potential need for new design applications. Your advisor may recommend filing applications showing different kinds of representation of the design and the preparation of suitable drawings or photographs could take time. You should therefore avoid giving instructions to file the design applications very close to the end of the grace period.
- It is still preferable to file an application for design protection before you disclosure your design but the grace period is available if you need it.