Design first, hype later: An early disclosure near miss

On the surface, it looked like a classic case of rights lost through premature disclosure. However, with some careful analysis and a targeted strategy, we were able to salvage those design rights. The result shows that even if you’ve already shared your design, not all is lost.

In our previous article, Who’s Who in the Zoo, we looked at the importance of getting the right legal entity on your IP paperwork. This story shows that it’s not only the “who” that matters in IP, but also the “when.”

The problem: Buzz before protection

Our client came to us with a request to file a design registration for a new type of cleaning glove. Straightforward enough. Unfortunately, when we asked the standard question “Has the design been disclosed to the public?”, the answer was not one we wanted to hear.

They explained that, yes, they had already distributed free samples of the glove to social media influencers. In fact, they had actively encouraged those influencers to post online content promoting the glove. Sure enough, the glove had already appeared in multiple online videos and posts, with clear, detailed visuals.

From a design law perspective, this was serious. While Australia now provides a 12-month grace period for filing after disclosure, many other key jurisdictions require absolute novelty. That means if a design has been shown publicly, the right to register it for design protection may already be gone.

At first glance, the client appeared to have jeopardised their chance at international design protection.

The strategy: Finding the gap

Instead of writing off the option of design protection, we took a step back and conducted a thorough audit of what exactly had been disclosed.

We pulled together:

• Social media posts, videos, and influencer content featuring the glove; and
• The physical product that the client now wanted to register.

We compared the two carefully. And that’s when we spotted a crucial difference.

While the general shape, colour, and overall form of the glove in the posts matched the product in hand, the surface texture of the final glove had been changed. This was the gap we needed!

We built our design application around that feature. The application:

• Highlighted the surface texture with detailed figures, including a close-up drawing of the texture; and
• Included a Statement of Newness and Distinctiveness, expressly identifying the texture as the visual feature of interest.

By focusing on what was genuinely new, rather than trying to protect what had already been disclosed, we created a defensible basis for registration.

The outcome: A near miss becomes a win

As expected, the examiner raised the earlier social media posts as prior art. Fortunately, we were prepared and ready to address the objections head on.

We argued that:

• The textured surface created a different overall visual impression compared with the glove shown online; and
• An “informed user”, such as someone familiar with cleaning gloves, would notice and appreciate the difference.

The examiner accepted this reasoning. The design was successfully certified in Australia and registered in several other jurisdictions, including some with no grace period.

What began as a potential disaster for the client was turned into a positive outcome. The relief on their side was clear: the early hype hadn’t cost them their IP after all.

Takeaways

There are four key lessons in this story:

Audit early. If disclosure has already occurred, don’t panic. A careful analysis of what exactly was shown, and what has changed since, can uncover opportunities for protection. Even seemingly small differences like surface texture can make all the difference in design law.

Tell your IP team everything. Samples, photos, posts, trade shows, “early buzz” campaigns — they all count as disclosure. The more information your IP team has, the better chance they have of crafting a workable strategy for protection.

Don’t always rely on grace periods. While Australia and some other countries provide a window for late filing, many jurisdictions don’t. Relying on grace periods risks leaving you with patchy or incomplete international coverage.

Creative filing strategies work. Focusing on what’s new and distinctive in your final product can lead to for strong protection even after disclosure. A strategic approach can often recover value where a simple “too late to file” mindset might have given up.