Industrial Designs

What is an industrial design?

Canadian industrial design registrations (similar to United States "design patents") protect original features of shape, configuration, pattern or ornamentation applied to manufactured articles. For example, a new water jug is unlikely to be patentable because its functional characteristics (container, handle, spout, etc.) are not new. But, if the outwardly visible shape or appearance of the new water jug differs from the shape and appearance of prior water jugs, then the shape and appearance of the new water jug is can be protected by industrial design registration (or design patent). The registration protects not only the specific design registered, but also any design not differing substantially therefrom.

How long does registration last?

In Canada, the term of industrial design protection is ten years from the date of grant of the Canadian industrial design registration, subject to payment of a maintenance fee as discussed below. United States design patents have a fourteen-year non-renewable term, counting from the date of grant of the design patent.

How widely does it apply?

Separate protection must be obtained in each country of interest. A Canadian industrial design registration protects the design only in Canada. To protect the same design in the United States, a separate United States design patent is required.

There is no such thing as a "worldwide" registration. Although, in some cases, international treaties may simplify the foreign design protection process, as discussed below.

What cannot be registered?

• Features of shape and appearance, which are determined only by the functional characteristics of an article cannot be protected. For example, the shape of a screwdriver bit typically depends upon the shape of the drill chuck in which the bit is to be mounted and upon the shape of the screw head which is to be driven by the bit. If those are the drill bit’s only "new" features then it cannot be registered;
• Features of shape and appearance, which are invisible at the time of purchase or during normal use generally cannot be registered. This would include, for example, the shape and appearance of internal parts of a machine;
• Processes, principles of construction, and construction materials cannot be registered as industrial designs, but may be patentable if they are novel, useful and unobvious.
  See Patents FAQ for further information; and,
• If an attractive design is seen in some foreign country and no corresponding design is registered in Canada, the person seeing the design cannot register the design in Canada, because such person is not the author or true proprietor of the design. An exception applies if the Canadian design rights are properly assigned to such person by the true proprietor. But, if the one-year grace period discussed below has expired, it will be too late to validly register the design in Canada in any case.

What time limitations apply?

In Canada, an application for industrial design registration must be filed no later than one year after the earliest publication of the design. "Publication" includes distributing samples or making public use of an article including the design, selling or exhibiting such articles for sale, and publishing the design in advertising or other printed material of any sort.

The United States has a similar one-year "grace period", but Europe and many other jurisdictions have no grace period whatsoever. Any public disclosure of the design, before filing an application for industrial design registration, can result in loss of protection in such countries.

Should a non-disclosure agreement be signed?

To preserve potential design registration rights, the design should not be disclosed, prior to the filing of an application for industrial design registration, to anyone who has not signed a properly drafted non-disclosure agreement.

Who can apply for design protection?

• The "author" of a design is the person entitled to register the design, unless the author was paid to create the design for another person, in which case the other person is entitled to register;
• If the design was created by two or more people, they jointly own the design rights and may apply to register the design in their joint names;
• If a design is made during the course of the author’s employment, the employer may automatically acquire the right to apply to register the design, although this may not always be the case;
• The design rights can be assigned from one person to another; and,
• If the author dies or is incapacitated, the right to apply may vest in the author’s executor, administrator or other legal representative.

When should a search be conducted?

Time and budget permitting, it may be wise to conduct a search before applying to register a design. If the same or a similar design has been disclosed anywhere in the world, it may not be possible to register the design.

Worldwide searches are impractical, so a limited search is usually made in only one country.

No search will guarantee the registrability of any design. The objective is to make a reasonable assessment of the prospects for obtaining worthwhile design protection. Search results can also be useful in preparing an application for design registration.

Design registrability searches typically involve a time-consuming examination of design illustrations on file in the office in which the search is conducted (usually the Canadian Industrial Design Office or the United States Patent & Trademark Office).

Searches need not be confined to the records of the Industrial Design or Patent Office. Trade catalogues published anywhere and at any time by manufacturers of similar articles are often worth searching for relevant prior art designs.

What information is needed to conduct a search?

Conducting a search requires sketches, drawings, and photographs or a specimen of the design. They should show all features of shape, ornamentation or pattern which are to be protected. It is also helpful to have details of any known prior art, a summary of the differences between the design and the prior art, a summary of the features of the design which are considered to be novel and original and details of any possible variants or modifications that could be made without departing from the basic design.

What information is needed to register an industrial design?

• Good quality sketches, drawings, photographs or specimens showing all of the features of shape, ornamentation or patterning which are to be protected;
• The full name(s) and address(es) of the author(s) of the design;
• If the design is to be registered in the name of a party or parties other than the author(s), the full name(s) and address(es) of each such party are also required. It is also necessary to explain how the design rights were transferred from the author(s) to each such party. In some cases, it may be necessary to prepare an appropriate assignment document for execution by the author(s) and to record the executed assignment at the Industrial Design Office;
• The date and circumstances of the earliest publication, use, sale, offer for sale or any other non-confidential disclosure of the design or articles embodying the design, anywhere in the world; and,
• Details of any known similar designs and a summary of the primary features which distinguish the design that is to be registered.

See forms and filing information for further details.

What examination does the Industrial Design Office conduct?

Most design registration offices employ examiners who scrutinize design applications for novelty and compliance with formal requirements.

In some cases, examiners raise objections that are usually answered by argument, application amendment or both. If not satisfactorily dealt with, such objections can be fatal to the design application, but that is quite rare. And in most countries, various appeal procedures are available.

If the examiner is ultimately satisfied with the merits of the application, it is allowed and an industrial design registration certificate is issued.

How long does registration take?

It takes about six months to one year after filing of the application (longer in some countries) to "prosecute" the application through to the grant of an industrial design registration. In this context, prosecution typically consists of responding to any requirements or objections that may be raised by an examiner, paying registration fees, and complying with formal requirements for the design registration to be issued.

To keep a Canadian industrial design registration in force for its full ten-year term, a "maintenance fee" must be paid before the fifth anniversary of the registration date. No maintenance fees are payable in respect of a United States design patent. Some other foreign countries charge design maintenance fees.

What about international applications?

Most countries have signed the "Paris Convention", which allows a design applicant to claim priority over a design application filed within the previous six months.

As described above, to obtain valid design protection in most countries it is essential to file an application before the design is publicly disclosed – but the Paris Convention provides an important exception. As a result, in most countries, it is sufficient to file within six months of the date on which the earliest application was filed, provided that the earliest application is itself filed before any public disclosure of the design anywhere in the world.

A few countries – including Afghanistan, Andorra, Ethiopia and Saudi Arabia – are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of design rights there.

For more information contact mail@patentable.com (Oyen Wiggs Green & Mutala LLP)