In Australia we have ‘design registrations’ which are akin to design patents in the US and ‘patents’ which are akin to utility patents in the US. A general 12-month grace period has long applied in connection with Australian patents whereas there is no similar grace period in connection with Australian design registrations. Prematurely publishing a design can immediately lead to a loss of design rights.
The situation is about to change. A 12-month grace period will soon be introduced. As of 10 March 2022, design owners who prematurely publish their designs may secure valid design protection by applying for design protection within 12-months of the first publication. The new provision is here.
The new grace period for designs will differ from the grace period for patents in that publications (not earlier than 10 March 2022) in the 12 months leading up to the priority date will be excused. As such, valid Australian design protection may be secured by filing a foreign design application within 12-months of a publication then filing an Australian design application within the following 6 months (and along with a claim to priority from the foreign design application). In contrast, the grace period for patents excuses publications in the 12 months leading up to the first Australian non-provisional filing date.
The new grace period for designs is framed in generous terms to excuse more than premature disclosures of identical designs. It excuses ‘publication or use of a design (which may or may not be the subject design)’ by a party connected to the registered owner. On the other hand, it does not excuse disclosures by foreign Designs Offices (and similar organisations); such disclosures are explicitly carved out of the new grace period.
Despite the generous terms of the new grace period, we recommend viewing the new grace period as a back up in case of error rather than something to be relied upon as a matter of course. The new grace period will not assist (i.e. rights will be lost) if others independently create and publish similar designs before design protection is applied for.
