18.6. Prior publication or use exceptions: Grace Period

After amendments in 2021, s 17(1) of the Act, depending on the date the design was filed, provides that for the purposes of deciding whether a registered design (subject design) is new and distinctive, any publication or use of a design, by the owner or designer, to which the subject design is identical or substantially similar in overall impression, made within 12 months before the priority date of the subject design, can be disregarded from the prior art base. This time-period is known as the ‘grace period’.

It is important to note that the grace period will only be relevant to registered designs which were filed on or after 10 March 2022, or otherwise have a priority date on or after 10 March 2022.  

Even if a design application was filed on or after 10 March 2022, this does not mean that the grace period will apply to all prior publications and uses. 

​​​​​​​If the relevant publication or use occurred before 10 March 2022, the grace period provisions do not apply. However, interested persons may wish to consult Parts 18.2 (international exhibitions) and 18.3 (unauthorised disclosures) of this Manual.

​​​​​​​For design applications filed before 10 March 2022, please see also Parts 18.2 and 18.3 of this Manual regarding the predecessor version of s 17. 

The grace period provision will only apply to publications or uses occurring on or after 10 March 2022.

This means that for publications or uses to be disregarded under the grace period, they must have occurred on or after this date.

The grace period provision has some other conditions and limitations. It only applies to designs published or used by:

• A relevant entity (s 17(1)(a)) and/or
• A person or body that derived or obtained the design from a relevant entity (s 17(1)(b)).

And, it does not cover publications made by the Registrar of Designs or publications made on equivalent overseas designs databases. If a person has a publication on a foreign register outside of Australia, which was published in the 12-month period, this will continue to pose difficulties for an owner and these publications may not be disregarded. 

What is a 'relevant entity'?

‘Relevant entity’ is defined in s 17(1D), and includes registered owners of a design, their predecessors in title, and the designers who created the design.

Where the use or publication was within the 12-month period leading up to the priority date and it was by the relevant entity, the use or publication may be disregarded. 

How is a design is 'derived' or 'obtained' from a relevant entity?

If a person has been directly provided or shown a design by the relevant owner, then they have derived or obtained that design from a relevant entity. It is also possible for a design to have been indirectly derived or obtained. ​​​​​​​

‘Derivation’ may be clear from the information included as part of the prior art and as part of declaratory material provided by owners to the Registrar. For example, the publication of an online article may feature an image and make a direct reference to the company that owns the registered design under examination. Further, it may be clear from website information that the owner is directly connected to a particular website. Information that shows that a design is derived from an owner should be presented with a declaration.

Derivation of third party-publications is also presumed when the owner of the subject design has established that they published relevant prior art before the third-party publication(s).

Subsection 17(1C) indicates that a cited design (called the ‘other design’) that is published (or used) by a third party who is not a relevant entity is presumed to have been derived or obtained from a relevant entity once the conditions set out in both s 17(1C)(a) and 17(1C)(b) are established.

In particular:

• Paragraph ​​​​​​​17(1C)(a) requires the registered owner to show a relevant entity published or publicly used a design (called the ‘first design’) before the publication or use of the ‘other design’ (third-party citation).
• Paragraph 17(1C)(b) requires the ‘other design’ be identical, or substantially similar in overall impression to, the ‘first design’. ​​​​​​​

The owner of the subject design is able to demonstrate that they first published a design to which the subsequent third-party publications are identical or substantially similar in overall impression. The ‘first design’ does not need to be identical to the registered design in question. This allows a designer to register a slight variation of their earlier published design and rely on the grace period provision.

Some examples of persons who, depending on the evidence and specific circumstances, might have derived or obtained a design from a relevant entity include:

• Distributors of the product on behalf of the relevant entity
• Customers of the relevant entity
• Marketing agents or advertising partners of the relevant entity
• Employees of the relevant entity who have performed an unauthorised disclosure of the design to public
• Persons who publish a review of the product
• Persons who view the design at an international exhibition and publish photographs of the design
• Persons who have viewed the product online or in a store and photographed the design and shared their own photographs or links to material about the product on social media.

Publications or uses of a design by an IP office to which the grace period does not apply

Some third party-publications that have occurred in the grace period and that may have been derived or obtained from a relevant entity still cannot be disregarded from the prior art base because of s 17(1B).

Subsection 17(1B) provides that the grace period may not apply to publications made by:

• ​​​​​​​The Registrar of Designs, that is the Australian Registrar of Designs, (for example designs published on Australian Design Search). Note also that designs that have an earlier priority date (to the subject design) but which are not published during the grace period continue to be relevant prior art and will be cited because of s 15(2)(c)
• ​​​​​​​A person or body who has a similar function to the Registrar of Designs (publications made on overseas databases by a foreign, international or regional IP offices).

Accidental publications or publications made by a foreign IP office under a law relating to a different IP Right (for example, a publication of a design within a patent specification) may however be able to be exempt from the prior art base under the grace period. The registered owner will be required to demonstrate that any publication made on a designs database was in fact made in error by the foreign IP office.

To summarise, the grace period would not apply to exclude publications of a design by:

• the Australian Registrar of Designs 
• other foreign national IP offices
• international organisations (such as WIPO) or 
• regional organisations (such the European Union Intellectual Property Office).

What happens if there is independent creation by a third party?

Subsection 17(1C) allows for a third party to rebut the presumption of derivation and show that prior art is not covered by s 17(1). This requires that the third party establish that the creation of the ‘other design’, and its subsequent publication or use, occurred without reference to, or knowledge of, the ‘first design’. A relevant third party will have the onus of demonstrating that the prior art was independently created.

Where independent creation is demonstrated this will mean that the design remains as prior art. Therefore, the subject design may not be new and distinctive.   

Where independent creation is asserted by a third party, or is at issue, it will almost invariably require the file being escalated to a hearing, especially where there is an inter partes dispute, or brought to the attention of the Deputy Registrar.

Arguments around independent creation will invariably require declaratory evidence about the independent creation, explaining in detail how the relevant prior art design was conceived, the design process and other relevant matters.

Information and material regarding independent creation of a design may be provided to IP Australia under s 69, see also Part 8.7 of this Manual. Any person may request examination of a registered design by the usual processes. For more information about examination please see Part 8 of this Manual.

Applying the grace period as part of an examination

Examiners will not apply the grace period provision based solely on examination research. The owner of the subject design will generally be required to submit relevant information about the prior publication or use in a declaration.

This relevant information and/or declaration can be supplied in response to an examination report which has cited design(s) that were published or used in the grace period. The usual prescribed period for the completion of an examination applies, see reg 5.04; if the owner wishes to provide a declaration in response, these timelines will need to be met. Alternatively, and optionally, information and/or evidence in declaratory form regarding when prior publication or use occurred can be submitted at any time leading up to the examination of the design. 

Standard examination procedures apply when a declaration or other information has not been submitted before an examination occurs. Where the examiner finds citation(s) and these were published or used in the grace period and are eligible to be disregarded from the prior art base, the examiner will issue a 1^st report and include general information about the grace period provision. Where an owner, in response to a 1^st report, asks for a citation to be disregarded from the prior art base under the grace period provision, they should submit information and/or evidence in declaratory form that supports this claim.

If a declaration or other information has been submitted before the examination takes place, the examiner will assess this detail as part of the examination assessment. If the information is sufficient to show that the grace period provision should be applied, the examiner will note on the case file that there was a potential citation(s) but also note that it has been overcome because of the grace period, and where appropriate issue a certificate of examination.

Where an owner has provided a declaration or other information and further details are required in order for the grace period to apply, the examiner will explain this and describe the details in the examination report.

Relevant information 

The types of information and evidence which may be useful, though not necessarily always required or sufficient, to support a claim that the grace period should apply to exclude prior art include:

• Dated screen captures of earlier publications.
• WayBack Machine screen captures of websites controlled by the owner at the relevant time.
• Declaratory confirmation that the owner at the relevant time controlled the social media account or website at the relevant time of a publication.
• Sales information and marketing plans; this could include dated information about scheduled product launches or other key dates for release of marketing material.
• Screen captures of the social media accounts and histories of administrator(s) or controller(s) of those accounts.
• Copies of internal emails with instructions for staff or external providers; this could include instructions to make designs publicly available on particular dates.
• Information and evidence which establishes that there has been an unauthorised disclosure of the design.
• Photographs or other media, such as news articles corroborating a public availability at a relevant time.  

Each case will be evaluated based on its specific circumstances and, where appropriate, the Registrar may request additional information, and/or a declaration, to determine the applicability of the grace period provision. The most useful information and material will typically include clear and dated evidence showing the design was published or used on a particular date, and that publication or use was made by a relevant entity, or by person(s) who clearly derived or obtained the design from a relevant entity. Where the publication or use does not include any clear links to the owner of the design being examined, the owner will need to address this.

It is always useful for an owner of a design to consider approaching an IP professional, especially if they have any doubts about what to provide in their declaration or other submissions. 

Declaratory Evidence

If a declaration is being provided, the person making the declaration should be a person who has direct knowledge of the information, material and events.

Please see Annex 1 to this Part for an example of declaration text regarding prior publication and the grace period; please note that not all of the material in this example declaration would always be required or sufficient, though it may be useful. The text for a declaration should be inserted into the appropriate IP Australia declaration form, the declaration then signed and submitted; the IP Australia declaration form is available here.

Information on the Register regarding the grace period

The Registrar may, where appropriate and practical, make a notation on the Register of the fact that a particular registered design has been certified because of the grace period.