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.
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.
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.
A disclosure will not start the grace period in two situations:
Our advice is that it is good practice to:
If you’d like to discuss this topic you can contact the writer, or any other of our trade mark people.