Introduction of Grace Period for Australian Designs

A Design Amendment (Advisory Council on Intellectual Property Response) Bill 2020 was passed by the Australian Parliament on 30 August 2021. The most notable change by this Bill is the introduction of a 12-month grace period for filing a design application in Australia.

This means you can make your design public up to 12 months before applying for a design right. All without losing your ability to get IP protection.

This change will come into effect from 10 March 2022.

In order for the grace period to apply, a design application in Australia will need to be filed within 12 months of public disclosure.

Such disclosure will need to have been made by any of the following:

(i) the designer(s) (sometimes referred to as the author(s) of the design);

(ii) the owner of the design where this is someone other than the designer(s);

(iii) a party authorised by the designer or design owner: or

(iv) a party who obtained the design from the designer or design owner without their permission.

However, it should be noted that the publication of a design by an official Designs Office is not eligible for the grace period.

The Bill also introduces an infringement exemption that protects third parties against infringing a registered design, where they were using it before its priority date.

Regardless of this grace period being introduced, the best practice is to file a design application before disclosing the design to any third party. If you do have a design that you consider commercially valuable, then the most prudent course of action is to first seek advice from a patent attorney as to possible design (or patent) protection, before contemplating disclosure to third parties.

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