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. Please see the Patents FAQ for
further information.
- 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
publish 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.
-
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.
What do searches cost?
Design registrability searches typically cost at least C$1,000. They
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.
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.
-
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.
What does registration cost?
In many cases no major 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.
What does it cost to maintain registration?
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.