Worldwide: Disclosing Before Filing? Grace Period Disharmony Creates Uncertainty For Applicants Seeking Design Protection Around The World

In design law, a 'grace period' operates to permit an application to be filed after publicly disclosing the design. If the application is filed within the grace period, the prior disclosure is not considered prior art to the application and novelty is maintained. Grace periods can be a helpful tool in allowing a designer to test the marketplace before incurring the costs of registering their design.

Currently there is no uniform novelty grace period standard throughout the world. Accordingly, care should be taken when disclosing a design prior to filing an application for registration, since doing so can render the design non-registrable in many jurisdictions.

In terms of the approach to grace periods, design jurisdictions around the world can be divided into the following general groups: jurisdictions providing a 12-month grace period; jurisdictions providing a 6-month grace period; and jurisdictions providing no grace period, i.e. 'absolute novelty'. The top 20 jurisdictions for design filings¹ can be grouped as follows:

Within each of these groups, individual countries can vary significantly on the finer details, including differences in how the standards are applied and the existence of specific limitations.

Canada is a country that offers a 12-month grace period for the registration of a design. However, the grace period is tied to the filing date of the Canadian application, as opposed to the priority date of the application, if there is one. Consider the following example for illustration:

• ABC Corp. developed two new ornamental designs for a coffee mug ("Designs A and B")
• On January 1, 2016, ABC Corp. disclosed Designs A and B for sale on its website
• On July 2, 2016, a U.S. design patent application is filed for Design A
• On January 1, 2017, a Canadian industrial design application is filed for Design B
• On January 2, 2017, a Canadian industrial design application is filed for Design A and claims priority to the U.S. application

Under the current regime, the Canadian application for Design A, despite the priority claim, lacks novelty in light of the prior disclosure and a valid registration is not available. On the other hand, the prior disclosure would not be citable against the Canadian application for Design B because it falls within the 12-month grace period.

Accordingly, operation of the Canadian grace period is not as flexible as some other countries, notably the United States, in which the 12-month grace period is tied to the priority date of the application.

The European Union also provides a relatively flexible 12-month grace period for prior disclosure, either by the designer or a third party as a result of information obtained by the designer. This is in contrast to the absolute novelty required in its utility patent regime.

For countries offering a 6-month grace period, there are variations and subtleties to be aware of. For example, some jurisdictions, such as Japan, have a grace period that does not apply automatically, but an applicant must request that its pre-filing disclosure be excused from affecting the novelty of the design application. This request should be made at the time of filing the Japanese application, and the applicant is further required to submit particulars of the disclosure within a prescribed period after filing. Brazil and South Korea also require the applicant to submit particulars of any pre-filing disclosure.

In some jurisdictions, such as Taiwan, the grace period applies only to certain types of disclosure, including display of the design at an 'an exhibition held or recognized by the government', a printed publication, or disclosure without the applicant's consent. In other jurisdictions, such as the Philippines, the grace period operates more flexibly and applies to various types of disclosures by the applicant.

Australia, India and Morocco are examples of countries that provide for a 6-month grace period in specific cases where the design is displayed at an 'official or officially recognized international exhibition'². This limitation means that, in most situations, these countries operate essentially as absolute novelty jurisdictions.

China is an absolute novelty country, for both designs and patents.3 Given the importance of the Chinese market for many products and services, applicants should always consider postponing disclosure so as not to exclude China from its filing plans.

For designs, grace period provisions vary throughout the world. Since not all of the jurisdictions provide a grace period, and given the inconsistency in the manner that grace periods operate, the safest course of action is to file an application before there is any public disclosure of the design. It is also recommended that applicants obtain professional advice for navigating the rules of each jurisdiction of interest.

Footnotes

1. WIPO Statistics Database, available at http://www.wipo.int/ipstats/en.

2. In accordance with Article 11 of the Paris Convention.

3. China does however recognize Convention priority, allowing a design application to claim priority to a first application filed in a member state, provided that the Chinese application is filed within six months of the filing date of the first application. The period of priority is 12 months for Chinese patents and utility models.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.