Industrial Design FAQ
Basics of Industrial Design
- What is an industrial design?
An industrial design (referred to as a design patent in the United States) is a form of intellectual property that protects the aesthetic or ornamental parts of a product. It may consist of two-dimensional features, such as a distinct coloring or pattern, or three-dimensional features.
- How is an industrial design different from a patent?
Unlike a patent, an industrial design does not create an entirely novel good or process, or a novel improvement on an existing good or process. Instead, it focuses on presenting a unique aesthetic change or design on an existing good or product, focusing on improving its aesthetic appeal to consumers.
- What can and cannot be protected by industrial designs?
Aesthetic features such as patterns, ornaments and shapes of an object can be protected by an industrial design. Ideas, methods of construction, functions or materials cannot be protected through an industrial design – please refer to FAQs on other types of intellectual property to see if you may be eligible for such protections.
- What rights does an industrial design confer?
An industrial design owner is able to bar other parties from making, selling or importing other articles that have a copy or a substantial copy of the design. As such, an industrial design registration virtually offers exclusive ownership of the design.
- Is it possible to get design protection and a regular patent for the same work?
Yes. Since an industrial design protects only the aesthetic features of a product, if you have created a product with a unique design which made an improvement to both the aesthetic appeal and the functionality of an existing good, you can protect your aesthetic design with an industrial design and the functionality improvements with a patent.
Registering Your Industrial Design
- Who can apply to register an industrial design?
Only the creator of an industrial design or their official agent, if applicable, may file for registration.
- Is there a time limit to file an industrial design registration?
Yes. In Canada, you must file the industrial design as soon as possible to preserve the novelty requirement, and, if it has been published or otherwise disclosed to the public, within 12 months of such disclosure.
- How long does registration last?
An industrial design is protected for ten years in Canada, with a maintenance fee shortly after the five-year mark.
- What documents and fees do I need to submit to register?
You will need to submit an application form with a detailed description of the industrial design and the article for which it is designed, photographs and/or drawings of the design and a government filing fee of $400, plus an additional $10 for each page of drawings exceeding 10 pages.
- What are the essential requirements for the registration of a design?
In order to be eligible for registration, your design must focus on an aesthetic feature of a common product, and be unique (unpublished or published within twelve months before the filing of an application).
- What is the maintenance procedure and how much are the maintenance costs?
A maintenance fee must be paid to maintain the industrial design registration. In Canada, this government fee must be paid at five years and six months from the registration date, and is currently $350.
- Should I conduct a search for registered industrial designs before I file my registration?
Yes. Conducting a search ensures that the design you are filing is unique and has not been previously registered, which could result in refusal of your application.
- Should I use an intellectual property lawyer to help me conduct this search?
In most cases, this is a good idea. An intellectual property lawyer can ensure that your search is thorough and covers all jurisdictions in which you plan to register, and can determine whether any non-identical designs could be similar enough for your application to be denied as a result.
- Can the registration of a design be cancelled?
Yes. However, you will not be refunded any of the fees that you have paid if you cancel your registration.
- Can I make an application for the same design again if the first application has been abandoned?
Possibly, if there is not an issue with meeting the novelty requirement in such circumstances.
Industrial Designs in Business
- What are the effects of publicizing your industrial design before filing an application?
Publicizing your industrial design before filing for registration could lead to several issues. First, if you fail to file within twelve months of the original disclosure, you lose your right to file in Canada as your design is no longer considered original. Second, someone else could file your design before you, and, as Canada operates on a first-to-file system, you may lose your rights to the design or have to enter into a costly and time-consuming battle to prove that you are the original creator.
- How soon can one manufacture and sell articles made according to the design?
You can begin sales immediately, but it is best to apply for registration before beginning sales to avoid disclosure issues (see above), or failing that, within twelve months of the earlier of the first disclosure or sale.
- Are registered designs made public?
Yes. As an exchange for the protection conferred onto you during the term of your registration, your design is then fully disclosed and placed into public domain at the end of your industrial design registration.
- How are industrial designs protected from infringement?
If your industrial design if infringed upon by another party, you can bring the case to a court in Canada to initiate civil action in order to get the infringer to cease and potentially pay damages. However, CIPO is not responsible for enforcing lawful industrial design use; as the owner, you are responsible for detecting and enforcing your rights where there is an infringement.
- What are the advantages to my business of protecting industrial designs?
Registering your industrial design confers significant advantages to your business. The exclusive right of ownership means that you are free to develop a reputation around your product molded entirely around your business, and gain from consumer goodwill that your product will accumulate. There is also a substantial return on investment as competition is eliminated from the market, and an opportunity to focus on developing other creative designs rather than being consumed with making yours the most cost-efficient in a competitive market.
- What happens if I don't protect my industrial design?
Failing to protect your industrial design could have negative consequences for your business. You may be forced to compete with businesses who begin to start producing your design in the absence of any restrictions on doing so.
- Is it possible to license or transfer ownership rights on a registered industrial design?
Yes. You can license the rights granted by your industrial design registration, essentially permitting someone else to produce, manufacture, sell or import your design on certain terms and conditions. You can also assign the rights granted by your industrial design registration, such as in the case of a sale, and thereby completely or partially transfer ownership to another entity.
- How do I request the recordal of an assignment or licence?
In order to get a legal recordal of the assignment or licence affecting your industrial design, you must file a copy of the agreement specifying this transaction, as well as pay any required government fees (check the Canadian Intellectual Property Office fee schedule for industrial designs for more information).
Industrial Designs in Different Jurisdictions
- Is a Canadian industrial design registration valid worldwide?
No. Industrial designs, designs and design patents are valid only in the country or jurisdiction in which it is registered.
- How do you obtain an industrial design registration, registered design or design patent outside your home jurisdiction?
In order to obtain an industrial design registration, design registration or design patent in another country, you must apply for such right with the intellectual property office of that country or jurisdiction. Certain jurisdictional offices allow you to secure design registrations in multiple countries via a single application (such as through the European Union Intellectual Property Office for a registered Community design for the European Union).
- How do you claim priority to an earlier foreign application?
Because Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, industrial design applicants will be entitled to convention priority, or getting priority filing on their design applications in other countries to the original Canadian filing date if they apply within six months of filing. For example, an application filed in Canada in January 1st, 2017 would take precedence over all applications filed in the United States between January 2nd, 2017 and July 1st, 2017 if its owner chose to apply for a design patent for the same design in the United States by July 1, 2017 and made a priority claim back to the filing date of the Canadian industrial design application.