TABLE OF CONTENTS
- What is an Industrial Design?
- What Kind of Designs can be Registered?
- Originality of Your Design.
- What Kind of Designs Cannot be Registered?
- How do you Register an Industrial Design?
- What is in an Industrial Design Application?
- How is my Application Processed?
- What happens if there are Conflicting Industrial Design Applications?
- How Long does it take to Register an Industrial Design?
- How Long do Registered Industrial Designs Last?
- Marking Your Product
- What does Registering an Industrial Design Do for Me?
- Can I Register My Design in Other Countries?
- What are Design Patents?
- Can I Sell My Industrial Design?
A registered industrial design protects the aesthetic look of a useful product. Most common products have either a shape, an ornamentation or a pattern which renders the product pleasing to the eye. For example, you may be able to register the design of a stylish looking hand bag, a modern looking tea kettle or even a rugged looking pair of boots. All of these items have design elements which have aesthetic appeal, and under the right circumstances, that aesthetic appeal can be protected by a registered industrial design.
First of all, the design must be aesthetic; it cannot be purely functional. The Industrial Design Office does not judge the aesthetic appeal of your product, but it will refuse a design that appears to be purely functional in nature. It is possible to register a functional design provided it also has aesthetic features. A product’s shape, as long as its visually appealing in some way, may be registered. A pattern which has been applied to a product may also be protected. Even particular patterns of ornamentation (for example ribbons and bows) which are applied to a product may be protected.
Not only does your design have to be aesthetic, it must also be original. If your design has been publically available for more than one year before you filed your application, then you will loose your exclusive rights to the design. Therefore, if you publically disclose your design (i.e. you make it available to the public), then you must file an application within one year of the disclosure if you want to register the design. It’s usually a good idea to file an application to protect your industrial design before you publically disclose your design.
The following designs cannot be registered:
- Purely functional designs cannot be registered as an industrial design. For example, the thread design on a bolt may be a purely functional design since it is intended to make the bolt function better. Purely functional designs may be protected by a patent, but they cannot be protected by industrial designs.
- Designs that are intended for items that cannot be seen. If the intended item is hidden or covered, then its design cannot be seen and; therefore, cannot be registered. For example, the design of a transmission gear may not be registered because the gear will be hidden in the transmission body and will never be seen by the consumer.
- Designs that have no fixed appearance cannot be registered. For example, a bean bag chair can have several different appearances, depending on how its deformed.
- The colour of an object cannot be registered as an industrial design. A pattern of colours (such as a series of stripes and coloured shapes) can be registered as a pattern, but colours as such cannot be registered. Hence, you can not register an industrial design for the colour red in a chair. However, you could register a design for a pattern of swirling lines of different colours for a chair.
- Methods of doing things, compositions of matter, functional features, and ideas. These things may protected as utility patents, but not as industrial designs.
The first step in registering an industrial design is preparing and filing an industrial design application. Drawings or photographs are created and an application form describing the drawings is prepared. The application is filed with the Industrial Design Office and the application fee is paid. The Industrial Design Office then reviews the application for form and content. They may issue a letter requesting that changes be made to the application, in which case a responding letter amending the application may be required. Then a registration is eventually granted on the application.
There are two parts to an industrial design application. Firstly there is a written form which outlines information about the design owner and which contains a description of the design and a description of the drawings. The description of the design must point out what you believe is new about your design. Your description should point out all of the features you believe are original.
- Each industrial design application must have either drawings or photographs of the design as it will be applied to the product.
- Paper Size: All drawings or photographs should be of good quality and be on either 8_ x 11 inches or 8 x 13 inches. They must be clearly reproducible by photocopying.
- Margins: There should be a clear left side margin of 1 inch.
- Lines: All lines have to be in black ink and must be clear, no matter how fine. The article itself must be indicated with solid lines, although dotted or dashed lines may be appropriate to show the surrounding structure. You may use heavier black lines to illustrate the design features.
- Photographs: The photograph must clearly show all of the features of your design. The article must stand alone against a neutral or blank background.
- Scale: The drawings/photographs must be large enough to clearly show all of the design features. The drawings/photographs must also be in the correct scale.
- Views: Your photographs/drawings should show all of the design features, so you may have to include several different views. The Industrial Design Office generally prefers perspective views (i.e. three dimensional views).
- Cross-sectional views may be useful if you want to illustrate the exterior profile of the product. Exposed cut surfaces are indicated by oblique parallel sectional lines.
- Shading: Shading is permissible, however, the standard practice is to use heavy lines on the shaded side of the product.
- Components: If the article has several component parts, then the drawing/photograph should show the entire assembled article.
- Other: If your article opens and closes, then it may be necessary to illustrate it in both open and closed positions. Both views are required if they are necessary to reveal the design features.
After the application is filed, the Industrial Design Office will give your application a preliminary review. A filing certificate will be issued to you confirming the filing date, name of the applicant and the application number. The office will review the application to see that it meets the preliminary requirements for filing. If something is missing from the application, they will send you a notice. The next step in the processing of your application is examination. The Industrial Design Office examines the description portion of your application to ensure that it accurately describes the design features shown in the drawings. The Industrial Design Office then searches its records to see if there are any other designs which are similar to your design. As mentioned above, your design must be original. If the examiner finds problems with your application, they will issue a reporting letter setting out the problem. Each of these reports shall have a deadline by which a reply to the report must be filed. It is often possible to amend the application to solve the problems outlined in the examiner’s report.
If two applications are filed for the same design, then the Industrial Design Office will process the applications on a first-come, first-serve basis. The application with the earliest filing date will proceed.
It generally takes between 12 to 18 months to process your application after it has been filed. If the application must be amended, then it may take longer. You don’t have to wait until your design is registered before you can start marketing your new design. We generally suggest not to publically disclose your design before an application is filed.
A registration for an industrial design lasts for five years, and is renewable for another five years. Assuming you pay the renewal fee when it is due, your industrial design registration will last for ten years.
To maximize the value of your industrial design registration, you should mark your product as having a registered industrial design. The best way to mark your product is with a capital “D” inside a circle followed by the name of the owner. This mark should be found on the product label or packaging. If you have marked your design in this way, then you can obtain a financial judgment against infringers.
By registering your design, you can stop competitors from producing, selling, importing or distributing products that copy your industrial design. Your registration permits you to bring lawsuits against would be infringers. If your law suit is successful, you can get a court order compelling the infringer to pay you damages, and prohibiting the infringer from making, selling or importing products having your design.
Since a Canadian industrial design registration only protects your design in Canada, you may want to register your design in other countries. Most countries have an equivalent to industrial design protection. If you file your industrial design application in one country, you can file applications to protect your design in other countries and still claim the benefit of the first filing date, provided those other applications are filed within six months of the first application. For example, lets say you filed an industrial design application in Canada on May 1, 2000 and you want to file for corresponding protection in the United Kingdom. If you file an industrial design application in the United Kingdom before October 1, 2000, then your United Kingdom application can have the benefit of the Canadian filing date (i.e. May 1, 2000).
In Canada, we refer to visually appealing designs as industrial designs. You can apply for and be granted an industrial design registration which protects your design. In the United States, they have a similar concept - only they refer to them as “Design Patents”. United States design patents are very similar to Canadian industrial designs. Design patents should not be confused with utility patents - utility patents protect the functional aspects of an invention.
A registered industrial design is just like any other property. It can be bought, sold, or licensed. It is also possible to sell or license an industrial design application before the registration is granted. To sell your Industrial Design, an assignment must be prepared and signed by the registered industrial design owner. The assignment must be in writing. The assignment document usually sets out the payment terms. It is advisable to retain a lawyer to prepare the assignment document. The assignment should be registered with the Industrial Design Office.