Grace period for design patent applications

The EU General Court has recently provided important reference on the application of the principle of grace period in industrial designs, which allows designers to test their products on the market before the design is formally registered, and in particular on the relationship between a published design and a subsequently registered design.

Legal Basis:

• According to Article 7(2) of Regulation (EC) No 6/2002, disclosure of a design by the creator or his successor in title in the 12 months prior to the application for registration shall not affect the assessment of the novelty and distinctiveness of the design. This mechanism allows the creator of a design to verify the commercial success of a design before applying for registration.
• In case T-66/24, the General Court of the European Union dealt with the community design registration of Liquidleds Lighting Corp. (the defendant) for an LED light bulb, which was challenged by Lidl Vertriebs GmbH & Co. KG (the appellant) for lack of novelty and distinctiveness. The appellant argued that prior disclosure of the design should be taken into account when assessing the validity of the registered design.

The court further clarified that the entire grace period does not require absolute consistency between the disclosed design and the registered design; design modifications during the grace period are permitted as long as the final design still maintains the same overall impression as the initially disclosed design; the grace period allows designers to adjust their products based on market feedback without losing legal protection, thereby protecting innovation.

The Court ruled that in order to allocate the burden of proof, the patent owner must prove that the disclosure was made within the grace period, i.e. the exception provided for in Article 7(2) of Regulation No. 6/2002 mentioned above applies; the invalidity applicant may challenge the application of the above provision but does not need to prove that the provision does not apply.

Conclusion
This decision is an important step forward in the protection of designers’ rights, confirming that the grace period is not limited to identical designs, but also applies to designs that have been modified but maintain the same overall impression. Moreover, the ruling strengthens the possibilities for designers to test their products on the market without affecting legal protection. The Court’s approach strikes a balance between protecting innovation and transparency in the community’s design system, providing greater legal certainty for professionals in the design industry.

Significantly, the Court’s interpretation is fully consistent with the forthcoming new EU Design Regulation (2024/2822) – parts of which will enter into force on 1 May 2025 – which explicitly states that self-disclosure of prior designs ‘requires the same protection as a registered EU design or does not differ in terms of the overall impression’. This legal consistency helps to ensure a stable and uniform legal framework even after the new regulation enters into force.