Registered designs can be used to protect the appearance of a product. Designs must be novel in order to be registrable. However, the UK has a “grace period”, which means that in certain circumstances design owners can apply for a registered design even after disclosing it to the public.

How does the grace period work?

Generally, a design must be novel at the time of filing, in that it must differ from publicly disclosed designs by more than immaterial details.

The grace period allows for public disclosures made by the designer (or their “successor in title”), to be disregarded as long as an application is filed within 12 months from the date of the first public disclosure.

The grace period is generally seen positively since it allows designers to “test” a design on the market before investing in the costs of registering the designs. However, there are some caveats which must be kept in mind when relying on the grace period.

Filing abroad

Grace period provisions vary from country to country and not all foreign territories provide a grace period.

Similar concepts apply in the USA and the EU, but other significant territories such as China and others do not provide grace periods.

Hence, it is essential to first consider which territories may be relevant for design registration in the future when making a public disclosure, since any disclosure may destroy chances of registering a design in territories where there is no grace period.

Third party disclosures

In terms of public disclosures, the grace period only applies to disclosures made by the designer (or by their “successors in title”). Third party disclosures made during the grace period will therefore count as “prior art” to be counted against the future design registration. While a direct copy may infringe other IP rights, the situation can be more difficult if someone else makes a design that is “inspired” by the original design.  So, there is an element of risk involved in making a design public without having it protected.

However, there is still protection against cases where a third party has acquired the design illegally, such as by copying or stealing it. In this scenario, the third party disclosure would still be covered by the grace period and would not count against the novelty at the time of filing by the design owner. However, proving copying by a third party is in practice quite difficult and may require expensive investigations. Third parties may also try to register a design in bad faith, which might lead to the design owner having to incur additional costs to invalidate the third party’s registration.

Regardless of the circumstances behind a third party disclosure, if filing before disclosure is not possible then the best way to reduce these risks and ensure that a design is registrable, is to file as soon as reasonably possible after a public disclosure.

Be careful about “tagging on” the priority period

When design protection is needed in multiple Paris Convention territories (most countries in the World), it is possible to file a first national application in one territory and then file subsequent applications abroad by claiming priority from the first application. This “priority period” is open for a period of six months from the first application.

Claiming priority from the first application has the effect of back-dating the subsequent filings to the date of the first application (the “priority date”).  So, a design owner can for example file for a registered design in the UK and then, within 6 months, file a US application and claim priority from the UK filing.

This has the advantage of spreading filing costs over a few months as well as allowing design owners to gather some insights on which territories are more commercially relevant and worth pursuing protection in.

However, the interplay between the grace period and priority claims is a subtle one and can vary from country to country.  In some countries, the grace period can be only be relied on if a specific national application is filed within the grace period.  However, in others, the grace period can be relied upon in full so long as the first filing (which establishes a priority date) is made before the end of the grace period (i.e. you may effectively be able to add together the priority period and the grace period).


The grace period provisions are designed with the purpose to help designers, by giving them a chance to test designs before applying for registration as well as providing remedies for accidental disclosures, amongst other things. However, it is important to keep in mind the above caveats and only rely on the grace period if really necessary.

If relying on grace period, common mistakes can be avoided by:

  • making an application as soon as possible after a public disclosure, to avoid the risk of unconnected third party disclosures; and
  • always considering which territories are commercially relevant before a disclosure and, for each territory, whether they have a grace period or other intellectual property rights which could be relied on if necessary; and to validate a filing strategy at an early stage.


At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!


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