Grace period (designs)

In design law, the grace period is the twelve-month period preceding filing during which disclosure of the design by its designer, by the designer’s successor in title or by a third party acting on information they provided cannot be held against novelty or individual character. It derives from Article L. 511-6 of the French Intellectual Property Code and from Article 7(2) of Regulation (EC) No 6/2002. It allows a product to be tested on the market before incurring the cost of registration.

Scope of the rule

The period is counted back from the filing date or, where priority is claimed, from the priority date. The disclosures neutralised are those attributable to the designer or successor in title, those made by a third party on the basis of information provided or action taken by them, for instance a distributor presenting the product, and those resulting from an abuse committed against them, such as the theft of prototypes. By contrast, the disclosure of an identical or similar design by an independent third party during those twelve months remains fully citable: the grace period only protects against one’s own disclosures, not against competition. It covers both novelty and individual character (caractère propre).

Limits and practical risks

The grace period is a safety net, not a strategy. First, it does not exist in this form in every foreign system, so marketing before filing may jeopardise protection in third countries, even if a French or EU filing remains possible. Secondly, the period is rigid and its starting point, namely the first disclosure, may be disputed by the opponent on the strength of online publications or catalogues. Thirdly, the holder must be able to prove that the earlier disclosure is attributable to it, which means keeping the contracts, emails and commercial documents establishing the chain between the holder and the disclosing third party. The rule differs from patent law, where the inventor’s own disclosure in principle destroys novelty, save in limited cases of abuse and official exhibitions.

Interplay with the unregistered right

The first disclosure within the Union simultaneously gives rise to an unregistered design, protected for three years against copying, and opens the twelve-month grace period for filing a registered right. The two mechanisms complement each other: the designer observes the market’s reception during the year following launch, then files the designs that justify it, without the designer’s own disclosure being held against it. Once that period has elapsed, only the limited protection of the unregistered right remains, followed, where appropriate, by copyright if originality is established.

Key points

The designer has twelve months after its own disclosure to file a design in France or with the EUIPO without that disclosure being held against it. The period runs from the first presentation to the public and does not protect against independent disclosures by third parties. Each launch should be carefully dated, evidence that disclosures are attributable to the designer should be kept, and filing should take place well before the deadline, bearing in mind the foreign countries targeted where a grace period may not exist.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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