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Industrial Designs – Intellectual Property’s Secret Weapon

Most people have heard of copyright, trademarks, and patents, three major categories of intellectual property. But there is a fourth lessor known category, which is growing in importance: industrial designs. An industrial design protects the aesthetic (as opposed to functional) features of a finished article. Generally all physical products with outwardly visible original aesthetic features may be eligible for industrial design protection, from cars to cutlery, lawn chairs to smart phones.

Fernando Blanco Calzada/Shutterstock.com
Fernando Blanco Calzada/Shutterstock.com

An industrial design can be registered in Canada by filing an application with the Canadian Intellectual Property Office. Among other requirements, the design will be registered if: (a) the applicant has not publically disclosed the design more than one year before the filing date (the “one year grace period”) and (b) the design is not identical to or does not so closely resemble any existing registered industrial design as to be confounded therewith. For a registration to be valid it must also be “original” with respect to all designs, registered or not, that were publically available as of the filing date of the application.

Once registered, the owner of an industrial design can exclude others from manufacturing or selling any product with a substantially similar design for 10 years (an initial 5 year term, plus an additional 5 years if a renewal fee is paid). This right may provide a competitive advantage and may represent a considerable asset to a business.

The United States offers a similar form of intellectual property protection called a “design patent”. A “design patent” is distinct from a “utility patent”, which is the more familiar form of intellectual property protection for “inventions”. Confusingly, both are sometimes referred to simply as “patents”.

US design patents have some important differences as compared to Canadian industrial design registrations, but are generally similar. Like in Canada, there is a “one year grace period” for filing an application for a US design patent after the design is publically disclosed. An application for a US design patent is evaluated in light of all publically available designs, patented or not, that were publically available as of the filing date of the application. To be patentable, among other requirements, the design must not be either identical to or an “obvious” variant of any such publically available design.

Like in Canada, a US design patent provides a right to exclude others from manufacturing or selling any product with a substantially similar design, however the term of a US design patent is 14 years (and is soon to be extended to 15 years).

The importance of industrial designs and design patents is evidenced by recent US litigation. In Apple v. Samsung, a 2012 case of the US District Court for the Northern District of California, Apple asserted that Samsung had infringed three of its utility patents and four of its design patents for portable electronic devices. The jury found that all three utility patents and three of the four design patents were infringed by several Samsung devices, and awarded Apple more than a billion dollars in damages. (The presiding judge has since overturned the damage awards for about half the Samsung devices (amounting to about half the total damages) and ordered a new trial to reconsider the damages for these devices. Samsung has appealed the damage awards for the remaining devices.)

Industrial design registrations and design patents are relatively cheap, easy, and quick to obtain. Any business that designs products should carefully consider seeking this form of intellectual property protection. To see some example US design patents, visit the Google Patent Search tool, select “design” as the patent type/status, and provide your choice of search terms.

By Cameron G. Funnell

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