Grace period of 12 months from 10 March 2022 for Australian registered designs

Great news for Australian design innovators and overseas applicants alike. A 12 month grace period before the priority date (s17(1)) permits you to test the market and elect to file a design registration application without automatic invalidation owing to prior publication. There's some nuance which still requires care from applicants.

The grace period allows a design to be shared publicly (inside the provisions of new grace period amendments) without affecting the rights of any later filed design registration. This safety net catches those who:

• inadvertently published their design (for example, 'sneak-peek' images appearing in trade publications prior to launch)
• overlooked the possibility of filing for protection before launch

Innovators can also use the grace period strategically to gauge market interest, select only those designs for registration which resonate with the market or simply delay the costs of design registration. Exploiting the grace period strategically rather than using it solely as a safety net is possible, but still not advised for high-value designs.

Is the prior publication eligible? 

A design application is eligible if the person who made the prior publication is: 

• the designer
• the owner of the design, such as an employer or successor in title
• someone authorised by the designer/design owner, such as a marketing company
• an unauthorised person who obtained or published the design without permission

Grace period declaration

A declaration is required but there is maximum flexibility as to when it is required. You can claim the grace period with a supporting declaration:

• when you apply for registration of your design
• any time before your design is (optionally) examined
• following examination when advised there are issues with prior disclosures

The requirements of a declaration include: 

• when the design was first published
• relevant information about how the design was used or published

Curious exception

The grace period is not available if the prior publication was in an overseas design database. This is somewhat of a trap for overseas design applicants. You must keep an eye on when any related overseas design registration is published. This is something to watch for as you could be in the clear except for this catch.

Overseas grace periods

Applicants should always be mindful that such generous provisions do not typically apply overseas. A limited number of overseas countries do provide limited grace periods of 6 months or 12 months. You should always enquire as to the current availability, period and circumstances of grace periods for any country of interest.