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.
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.
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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.
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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;
- 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.)
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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.
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Prosecution costs and Maintenance fees
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.
To maintain 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 foreign countries charge design
maintenance fees. Back to Top
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. Back to Top
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