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)