What are grace periods for registered designs?

Before you release your designs to the world there are a few things you should be aware of.

Obtaining a registered design in the UK

Registered design right is a registerable right which protects 2d and 3d objects (the whole or parts), including the appearance, surface pattern, texture, colour, shape etc. Registering a design provides you with a monopoly right to produce and commercialise the design for a period of up to 25 years (5 yearly renewals).

Grace periods

However, you can only obtain the registered design right if your design is novel and not common place within the relevant design field. In practice your own disclosure of your design at a trade fair could destroy the novelty of your design and prevent you from obtaining the valuable registered design right.

But there is some good news.

The UK Intellectual Property Office appreciates businesses often need to showcase their designs before spending money on registering their designs and scaling up production. As a result, you will have 12 months from the date you disclose your design to file your application for registered UK design rights. This is referred to as the 12 month “grace period”.

In practical terms all of the following will be deemed as a disclosure to the public:-

• Allowing trade magazines and academic journals to use your designs in press clippings.
• Disclosing your designs to commercial partners and friends and family where you are unable to show the designs where only disclosed under a duty of confidence or under a signed Non-Disclosure Agreement.
• Showcasing your designs at a design fair.
• Posting images of your designs on your social media pages.

Practical tip

The key takeaway from this blog is to ensure you diarise the first date you disclose your design to the public. At 6 months after that first disclosure, you should seriously be thinking about filing an application to register the design.

What if I miss the 12-month grace period deadline?

It is possible to obtain registered UK design rights outside of the 12-month grace period. However, all you will have is a relatively worthless design registration certificate. This is because the first thing the lawyers who act for the infringer of your design will do, is research if you disclosed your design more than 12 months prior to it being filed. Where they do find this evidence (i.e., that Instagram post that went viral 2 years ago), they will successfully be able to argue your registration is invalid.

If you would like to discuss how you can protect your designs, please feel free to contact us.