Industrial Design Registration
Industrial designs are the visual features of shape, configuration, pattern or ornament, or any combination of these features, as applied to a finished article. To be eligible for registration, your design must be original.
Our Canadian industrial design lawyers have over a decade of experience in design law and expertise in protecting designs around the world. We provide comprehensive industrial design services in Canada as well as direct filing and prosecution services for Canadian applicants for design patent applications in the United States.
We can also arrange for corresponding application filings to be made for you in other foreign jurisdictions through our network of foreign associates. When you apply for a design registration or design patent with us as your agent, we counsel you at every step of the application process in order to help you with filing and prosecution decisions and budgeting of the associated costs.
We also file Canadian industrial design applications for foreign clients and associates as their Canadian agent. The information and documents that a foreign client or associate needs to provide us with for a Canadian industrial design application includes:
- drawings or photographs depicting the design in a form suitable for filing in Canada;
- the name of the applicant and its complete address;
- the title identifying the article;
- the description of the design; and
- the country, application serial number and filing date for any priority claims.
Often this information may be found in a corresponding design application, registration, or patent for the same design filed abroad, in which case we may simply be provided with a copy of the foreign design application, registration or patent.
Further information about our industrial design services is found below. If you have any questions about our services or you are in need of industrial design or design patent services not specifically described here, please do not hesitate to contact us for a complimentary and confidential telephone appointment with a lawyer familiar with industrial design law.
Industrial Design Search and Clearance Opinion
Since obtaining a design registration does not preclude a product from infringing registrations owned by third parties, we provide industrial design searches and freedom to operate opinions in Canada to help clients determine the risk of infringement from making, importing, and selling their new product in the Canadian market.
Industrial Design Infringement and Validity Opinions / Cease and Desist Letters
We also provide opinions on infringement and validity issues, as well as prepare and respond to cease and desist letters containing allegations of infringement. For more information about our intellectual property litigation services, please see our IP Litigation page.
Typical Steps in a Canadian Industrial Design Application
Preparing and Filing Your Industrial Design Application
As your agent, we will prepare an application, which includes a title of the article to which your industrial design applies, a description of the design, and relevant drawings or photographs, and submit that application on your behalf to the Canadian Intellectual Property Office along with the requisite filing fee.
The Canadian Intellectual Property Office then records the filing information and filing date, and issues a filing certificate to us within three weeks of receipt of the application. Optionally, prior to preparing and filing an industrial design application, we can first conduct a search of the existing industrial designs in the Canadian Intellectual Office Property database, as well as elsewhere to gain confidence that your industrial design application fulfills originality requirements.
Examination of Your Industrial Design Application
An examiner at the Canadian Intellectual Property Office will then examine your application. They will classify it according to the Canadian Industrial Design Classification Standard,review your application for conformity with the Industrial Design Act and Regulations, and conduct a search of registered designs to ensure originality.
If all the requirements are met, the Canadian Intellectual Property Office will register your design. If there are any objections to your application, the industrial design examiner will notify us and we will recommend amendments to the application to be completed subject to your instructions. It is typical to have one or more of these examiner's reports prior to allowance of an industrial design application.
Allowance and Registration of Your Industrial Design
Once your industrial design application is deemed allowable, your industrial design will be registered by the Canadian Intellectual Property Office. Within about one week, we will receive a certificate of registration, a copy of the industrial design application as allowed, a cover sheet summarizing information about the design, and a notice explaining maintenance requirements.
Your industrial design will then be valid for ten years from the date of registration, provided that the maintenance fee due at five years from registration is paid within five years of the registration date. You may also submit an assignment or licence document against an industrial design application or registration to be recorded officially upon payment of a fee.
Our design services include:
Preparing, filing and prosecuting Canadian industrial design applications to registration
Preparing, filing and prosecuting design patent applications to issuance in the United States (representation before the United States Patent and Trademark Office available to Canadian applicants only)
Arranging and supervising the filing and prosecution of design applications in other foreign jurisdictions
Worldwide portfolio management and counseling for industrial design rights
Identifying where design protection may be obtained through an IP audit
Freedom to operate opinions for an industrial design to be applied to a product
Infringement and validity opinions
Negotiating and drafting licences, assignments, and security interests for industrial design rights
Design-related due diligence and portfolio evaluation in commercial transactions