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Designs

Design Patent = Industrial Design Registration

In Canada, “design patents” are protected as industrial design registrations.

Although industrial design registrations in Canada are equivalent to ‘design patents’ in the United States, in Canada they are quite separate from patents.

Less Expensive Than Patents.

Industrial design registrations are usually much less expensive to secure than utility patents and can be a very cost-effective form of intellectual property protection. The one variable in the cost of an industrial design registration is usually your ability to supply drawings which comply with the rules, or whether we must retain a skilled draftsperson to create them.

More on costs of design registrations is found here.

Availability

Industrial design protection in Canada is used to protect the non-functional aesthetic features of an article. These design patents are a distinct mode of intellectual property that act a bit like hybrid between patents, trademarks, and copyright law. The most important things to remember are:

a) if you make more than 50 articles, then you cannot rely on copyright to protect your design in Canada; and,

b) if you do not file your industrial design registration in Canada within 12 months of your first disclosure of the design to the public (ie. there is a 12 month ‘grace period’), then you irrevocably lose the right to apply for design protection in Canada.

Term & Renewal

Canadian industrial design registrations are valid for an initial 5 year term, and can be renewed for one further 5 year term (for a total possible term of 10 years).

When to register an industrial design (design patent) in Canada

– Unpublished designs can be filed any time;

– If the design has been published, an application must be filed within twelve months of publication; and,

– Within 6 months of your prior filing outside Canada, to claim priority.

What is registrable as an industrial design (design patent) in Canada?

– Features of shape, configuration, pattern or ornament (or any combination of these) applied to a finished article.

– Designs applied to a portion of a finished article.

– Variants: designs that are very similar and possess the described features without substantial variation are registrable under a single application.

– Sets: design features applied to several articles constituting a set that are common amongst all pieces of the set.

Not registrable as an industrial design (design patent) in Canada?

– design features that are dictated solely by the article’s function;

– a method of construction;

– an idea;

– materials used in the construction of an article; or

– colour (although one can protect a pattern created by an arrangement of contrasting tones).

Special Practice Rules for Industrial Design protection:

Registration is valid only if applied for and obtained in the name of the proprietor; the proprietor is:

  • The employer of the inventor who created the design as part of employment
  • The person for whom a design was created under contract
  • The person who has acquired ownership of the design by valid assignment

Accelerated examination is available in cases where an applicant has knowledge of infringing activity.

Convention priority

– Canadian application must be filed within six months from the earliest date on which the foreign application was filed.

– Claimed with no additional cost.

– A copy of the Priority document is not required.

Information and documentation required for filing an Industrial Design in Canada:

Name and address of the Applicant;
Title identifying the finished article;
Description identifying features that constitute the design
Drawings and photographs; and
Particulars of a foreign application for purposes of claiming priority.

How long to register?

A relatively trouble free industrial design registration application will advance through examination, approval and be allowed for registration within 14 months of the filing date.

Drawings, drawings, drawings.

The most common source of difficulty with applications is drawings that do not comply with the requirements. Consult our handout on Industrial Design Requirements and please provide sufficient time for assistance prior to filing.

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