INTELLECTUAL PROPERTY

What is an Industrial Design?

In Canada, an industrial design is a statutory monopoly granted in the visual appearance of shape, configuration, pattern, ornamentation (or any combination thereof) in a finished article. In the United States, industrial designs are referred to as “design patents”.

An industrial design protects only the visual appearance of a finished article manufactured by hand, tool or machine. An industrial design registration does NOT protect any functional features of the article or any method or principle of its manufacture or construction. In general, industrial designs are intended to protect designs for useful articles like furniture, wallpaper, carpets, automobiles, cutlery, clothing, etc.

Industrial design protection lasts up to 15 years from the date of filing of an application, subject to the payment of periodic maintenance fees. Until the industrial design expires, the proprietor has the exclusive right in Canada to prevent others from making, importing, selling, or renting any article with a design not substantially different from the registered design.

What is eligible for protection as an Industrial Design?

To be eligible for an industrial design registration, the design must be new. This means that it cannot have been previously known to other third parties and the applicant has not disclosed the design to the public prior to filing an application or the expiry of any available grace period. In Canada, there is a one-year grace period within which to file an industrial design application after public disclosure.

Who is entitled to an Industrial Design Registration?

The author of a design is the first proprietor unless the author created the design for another person as an employee or an independent contractor for good and valuable consideration. Prior to registration, the proprietor of a design may assume title to any application for the design that was improperly filed by a third party.

Can Industrial Designs be Sold or Licensed?

Yes, industrial designs can be assigned or licensed wholly or partially by written agreement. Such agreements may be subject to a virtually unlimited variety of limitations as to territory, term and conditions of sale.

To be effective against third parties, all assignments and exclusive licenses affecting an industrial design registered in Canada should be recorded with the Canadian Intellectual Property Office.

What are the steps to obtain an Industrial Design Registration in Canada?

  1)Registrability Search & Opinion

While not required, it can be useful to conduct a search before drafting and filing an industrial design application.  A registrability search provides: (a) guidance as to whether the design is likely to be entitled to registration; (b) guidance as to the potential scope of the monopoly that may be granted; and (c) guidance as to how the application should be prepared to highlight the new features of the design over what was previously known.

2)Preparation and Filing the Application

A single Canadian industrial design application can be filed for designs applied to the same finished article which do not differ substantially from each other (variants).

The application will generally include a title that identifies the finished article; a description which identifies the features of the design; and drawings or photographs which show the features of the design clearly and accurately as they appear on the finished article shown in isolation (including all variants).

3)Examination

After filing, an examiner will first review the application to determine whether it is in the proper format. The examiner will then conduct and review a search of other industrial designs registered and industrial design applications pending in Canada for relevant references. Based on this review, the examiner may issue one or more reports including objections to the application. The examination process typically takes anywhere from 12-18 months after filing. The cost of responding to the examiner’s objections and amending the application, will depend on the number and nature of the objections.

4) Registration

Once the industrial design application is found to be in compliance with all of the requirements of the Industrial Design Act, a Certificate of Registration will be issued.

Filing in Other Countries

.an industrial design only grants a monopoly to the proprietor in Canada. To obtain similar monopolies in other countries, corresponding applications must be filed in each relevant jurisdiction. Most countries in the world adhere to an international treaty which regulates the orderly filing of industrial design applications in multiple countries. The treaty stipulates that additional industrial design applications can be filed for the design within 6 months of the first application and will be effectively backdated to the filing date of the first application.

Hague – The International Design System

The Hague System for the International Registration of Industrial Designs is administered by the World Intellectual Property Office (WIPO). The Hague System provides a practical business solution for registering designs in up to 92 countries through the filing of a single international application. WIPO reviews applications for compliance with its formal requirements. Once the application meets all formal requirements, WIPO will record it in the International Register and issue an international registration certificate. WIPO will then publish the application and provide each country designated in the application an opportunity to conduct substantive examination under its own domestic legislation. Each designated country has the right to refuse protection within its own territory, notifying WIPO within six (in some cases 12) months of the date of publication of the international registration. Where protection is refused, applicants are notified through WIPO. No news is good news! If no refusal is issued by a given IP office, protection is deemed to be automatically granted in that  jurisdiction. Hague Industrial Design registrations remain in force for 15 years from the date of the application subject to the payment of periodic maintenance fees.