As mentioned in our report of 11 March 2022, a 12-month grace period to file a design application following publication or use by the owner is now in effect in Australia. The following is brief outline as to how the grace period is implemented.
Under the new provisions, the grace period for designs is applied by way of a declaration from a person who would have direct knowledge of the relevant material and events. In other words, if you wish to use the grace period to remove a publication from consideration during examination, you will need to provide a formal declaration describing the circumstances of the prior publication. The declaration must be in the approved form and include information and evidence to clearly show that the design was published on a particular date.
The types of evidence in support of the grace period may 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.
The declaration may be supplied during substantive examination (in response to an examination report) or at any time leading up to the examination of the design. It should also be noted that IP Australia's online filing service now includes provision to upload the declaration at the time of filing.
Please remember that the grace period for designs only applies to publications or uses occurring on or after 10 March 2022. Also, the grace period does not apply to publications made by the Registrar of Designs or to publications made by equivalent overseas designs databases (e.g., EUIPO).
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.