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Design Applications - Priority and Grace Periods

Design patents protect the visual appearance of a product and are an essential tool for creators and companies that invest time and money in designing new products. However, obtaining international protection for a design can be a complicated process. Therefore, if you have filed a design patent application in the United States and wish to seek protection in other countries, you must comply with specific rules and deadlines.


One of the essential deadlines to keep in mind is the six-month priority deadline for foreign design patent applications. This deadline applies to design patent applications that claim priority to a previously filed US design patent application (and vice versa). By claiming priority, you essentially state that your foreign design patent application is based on the same invention as your US application.


The priority deadline is critical because it allows you to establish an earlier filing date for your foreign application. This can be important because it determines the novelty of your design. If you file your foreign application after the priority deadline, any disclosures or publications that occurred between your US application's filing date and your foreign application's filing date could be used to challenge the novelty of your design.


For example, let's say you filed a design patent application in the US on January 1, 2022. If you file a foreign application in Europe on June 1, 2022, claiming priority to your US application, your European application's priority date will be January 1, 2022. This means that any disclosures or publications that occurred between January 1, 2022, and June 1, 2022, cannot be used to challenge the novelty of your design.


It's important to note that the six-month priority deadline only applies to design patent applications, not utility patent applications. For utility patents, the priority deadline is 12 months from the filing date of the US application.


However, you may still have some options if you miss the six-month priority deadline for your foreign design patent application. Some countries, such as Japan and South Korea, offer a grace period of six months for filing a design patent application after a public disclosure. This means that if you accidentally disclose your design before filing your application, you may still be able to obtain protection in those countries.


Additionally, the United States offers a one-year grace period for filing a design patent application after a public disclosure. This means that if you publicly disclose your design before filing a US application, you have one year from the date of the disclosure to file your application and claim priority to the disclosure. However, it's essential to note that this grace period only applies to the inventor's disclosures and not to disclosures made by others. Here is a link to WIPO's listing of international grace periods.


In conclusion, if you are considering filing a design patent application in the US and seeking international protection, keeping the six-month priority deadline in mind is crucial. Missing this deadline could have severe consequences for the novelty of your design. However, if you miss the deadline, options may still be available to obtain protection in certain countries or take advantage of the one-year grace period in the US.

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