Disclosing my invention or design – Should I rely on grace periods ?

Australia like the United States has a “12 month” grace period for filing patent applications. This means that an owner/inventor has up to 1 year from their date of public disclosure to file patent applications in these countries.

Whilst the US has such a grace period applying to design protection, Australia at present does not. However, in December 2020 the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was introduced into the Senate and is currently before Parliament for consideration. Should this Bill pass through Parliament, it will introduce a “12 month” grace period for filing design applications in Australia, thereby providing an owner/author of a design with 1 year from their date of public disclosure to file a design application in Australia. For more information see https://www.ipaustralia.gov.au/about-us/legislation/designs-amendment-advisory-council-intellectual-property-response-bill-2020

New Zealand also has a one year ‘grace period’ for filing a patent application following an inadvertent public self-disclosure of the invention.

Such grace periods should not be relied upon as matter of routine practice or as a general filing strategy for patents and designs, but rather be used as fall-back position should an invention or design be inadvertently disclosed. We say this because there are various drawbacks with grace periods, the most notable of these is that not all countries provide such grace periods for patents and designs.

The best practice is to file a design and/or patent application before disclosing the design or invention to any third party. If you do have a design or invention that you consider commercially valuable, then the most prudent course of action is to first seek advice from a patent attorney as to possible patent or design protection, before contemplating disclosure to third parties.

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