During the process of creating a new design, it goes through several stages starting from an initial idea or concept, followed by development, verification of its suitability (functional, regulatory, acceptance), and finally its disclosure and commercialisation. The point in this process at which the designer or company considers protecting the design as an Industrial Design is essential in order to obtain effective protection.
Industrial Design, in general and specifically as practised in the EU, requires—among its validity conditions—that the design filed be new, meaning that no identical design has been made available to the public before the filing or priority date.
It is understood that disclosures made by the designer and/or company owning the newly created design are taken into account when assessing novelty for EU Design applications, meaning that the designer or company can destroy novelty through their own disclosures.
Considering the particularities of Industrial Design registration and how designs are used across different creative sectors, this novelty requirement and the issue of prior disclosure is complemented by the grace period, which acts as an exception benefiting the creator with regard to their own prior disclosures.
In the applicable EU legislation (Regulation (EU) 2024/2822, amending Regulation (EC) No 6/2002, and Directive (EU) 2024/2823), this grace period is set out in Article 7(2), which states that a disclosure made within the 12 months prior to the filing or priority date will not be taken into account if it was made by the designer or their successor in title; or, alternatively, if the disclosure was made by a third party as a consequence of information or action by the designer. To benefit from this exception and ensure that the disclosure is considered harmless, it must be proven, if required, that the design disclosed before the filing date belongs either to the author invoked in the application or to their rightful successor.
In other jurisdictions such as the USA, Japan or the United Kingdom, among others, grace period provisions are aligned with the EU system. However, in other key jurisdictions such as China, absolute novelty is required, with far stricter exceptions than those applicable in the EU or the aforementioned countries.
But what happens when third‑party disclosures occur during the grace period? In other words, what if a third party discloses a product between the creator’s initial disclosure of the original design and the actual filing within the 12‑month grace period?
Two scenarios arise:
- The third‑party disclosure results from an act or information provided by the designer/creator of the disclosed design, such as disclosures that are copies of the product disclosed by the original designer, for instance after a trade fair or public presentation—either in person or on social media—of the product/design.
- The third‑party disclosure results from an independent act of creation, meaning it is not based on the design initially disclosed by the creator/designer, and therefore shows no link to the designer.
In the first scenario, where there is a clear link between the third‑party disclosure and the prior disclosure by the original designer/creator, such disclosure is covered by the grace period and is not considered prior art, as it is deemed merely a re‑disclosure by copying or an act of bad faith.
In the second scenario, where no connection can be established between the third party and the designer/creator of the original design, and it can be argued that the second creation is entirely independent of the original, that disclosure DOES count as prior art and may destroy the novelty of the creator’s subsequent filing.
Although this situation may appear unlikely or coincidental, it introduces the need—sometimes complex—to demonstrate the link between the original disclosure by the designer/creator and the third‑party disclosure, with the evident difficulty this may pose during the (administrative or judicial) examination of novelty for a Design registered under the grace period.
For all these reasons, relying on the 12‑month grace period to file an Industrial Design application should not be understood as a priority right, as it may be affected by independent—or allegedly independent—creations that must be challenged and proven.
Although it may sometimes be necessary to show a design in order to assess client or market response, the recommendation is always to be able to prove authorship of the design and/or the disclosure made, as well as to file the Industrial Design application as soon as possible—preferably before disclosure, and if after disclosure, shortening the time until filing—to avoid such independent “coincidences” and ensure that the filed Industrial Design cannot be invalidated.
Article by Xavier Prados.
