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 protectible
by industrial design registration (or design patent). The industrial design
registration protects not only the specific design registered, but also any
design not differing substantially therefrom.
Duration
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.
Territorial
Scope
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 "world-wide" protection. In some cases,
international treaties may simplify the foreign design protection process, as
discussed below.
What
cannot be protected?
-
Features of shape, appearance, etc. which are determined only by the functional
characteristics of an article can not 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 of shape
then those features will not be protectible.
-
Features of shape, appearance, etc. which are invisible at the time of purchase
or during normal use are generally not protectible. For example, the shape and
appearance of internal parts of a machine would not be protectible.
-
Processes, principles of construction, construction materials, etc. are not
registrable as industrial designs, but may be patentable if they are novel,
useful and unobvious. Please refer to our Patents FAQ for further details.
-
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.)
Premature
disclosure can destroy design rights!
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 of an article bearing the design, selling or
exhibiting such articles for sale, publishing the design in advertising or
other printed material of any sort, public use of articles bearing the design,
etc.
The United States has a similar one year "grace period." Many other
jurisdictions have no grace period whatever. Any public disclosure of the
design, before filing an application for industrial design registration, can
result in loss of protection in such countries.
Non-Disclosure
Agreement
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, then 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
not always.
-
The design rights can be assigned from one person to another.
-
If the author dies or is incapacitated, the right to apply may vest in the
author's executor, administrator or other legal representative.
Design
Registrability searches
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, the design may not be protectible.
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 object 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.
Search
costs
Design registrability searches typically cost at least CA $1,000. Such 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 an 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.
Information
we require to conduct a search
To conduct a search we need sketches, drawings, photographs or a specimen of the
design, showing all features of shape, ornamentation or patterning which are to
be protected. Also helpful are: 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.
Information
we require to register an industrial design
To prepare an application for industrial design registration we require:
-
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), we also require the full name(s) and address(es) of each such
party. Please also 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 in 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.
-
Details of any known similar designs and a summary of the primary features
which distinguish the design that is to be registered.
Examination
by the Industrial Design Office
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 amendment
of the application, argument, or both. If not satisfactorily dealt with, such
objections can be fatal to the design application, but that is quite rare.
Further, 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.
Prosecution
costs
In many cases no prosecution costs are payable because the examiner issues the
industrial design registration certificate without raising any objections. If
prosecution costs do arise they tend to vary widely, but are typically several
hundred dollars in Canada.
Maintenance
fees
To maintain a Canadian industrial design registration in force for its full ten
year term (see "Duration" above) 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 foreign countries charge design
maintenance fees.
International
considerations
Most countries belong to the "Paris Convention." This allows a design applicant
to claim priority in respect of an earlier-filed design application.
Applications filed in such countries within six months of the filing date of
the original application are treated as though they were filed on the original
filing date.
As previously indicated, to obtain valid design protection in most countries it
is essential to file an application to register the design before the design is
publicly disclosed. An important exception applies if priority can be claimed
as above. It is normally sufficient to file priority-claiming applications in
most countries 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, e.g. 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
(Oyen Wiggs Green & Mutala LLP)