Patent Primer

What is a design patent?

Industrial design registrations in Canada, also known as “design patents” in the United States, protect the way an article looks, e.g. original features of shape, configuration, pattern, and ornamentation. For example, a new water jug is unlikely to receive patent protection because its functional characteristics (container, handle, spout, etc.) are not new. However, if the visible appearance of the water jug is new and differs from the appearance of prior water jugs, then the new appearance can be protected by an industrial design registration. An industrial design registration protects the specific design registered and any design not differing substantially therefrom.

Who can apply for design protection?
The author of a design is the person entitled to register the design, unless the author was paid to create the design for another person, in which case the other person is entitled to register. If an attractive design is seen in some foreign country and no corresponding design is registered in Canada, the person seeing the design cannot register the design in Canada, because such person is not the author or true proprietor of the design. An exception applies if the Canadian design rights are properly assigned to such person by the true proprietor.

What time limitations apply?
In Canada, an application for industrial design registration must be filed no later than one year after the earliest publication of the design. Publication includes distributing samples or making public use of an article incorporating the design, selling or exhibiting such articles for sale, or publishing the design in advertising or other printed material of any sort.

The United States and Europe have a similar one-year grace period for designs, but many other jurisdictions have no grace period whatsoever. Any public disclosure of the design before filing an application for industrial design registration can result in loss of valid design protection in such countries.

Before applying to register a design, should you conduct a search?
Time and budget permitting, it may be wise to conduct a search before applying to register a design. If the same or a similar design has been disclosed anywhere in the world, it may not be possible to obtain a valid registration for the design. However, in some cases the cost of conducting a search may exceed the cost of filing an application to register the design, and small differences may be sufficient to secure registration. Thus, the costs and benefits of conducting a search must be carefully considered. No search will guarantee the registrability of any design.

How long does design protection last?
In Canada, the term of industrial design protection is the longer of ten years from the date of registration or fifteen years from the original filing date, subject to payment of a maintenance fee after the first five years. United States design patents have a fifteen-year non-renewable term, counting from the date of grant of the design patent, and no maintenance fees are required. In Europe, a design registration covering the European Union has a term of twenty-five years, subject to payment of a maintenance fee every five years.

What about international applications?
There is no such thing as a “worldwide” design registration. Separate protection must be obtained in each country of interest. A Canadian industrial design registration protects the design only in Canada. To protect the same design in the United States, a separate United States design patent is required.

Most countries have signed the Paris Convention, which allows a design applicant to claim priority to an industrial design application filed within the previous six months. As a result, in most countries, it is sufficient to file within six months of the date on which the earliest application was filed, provided that the earliest application is itself filed before any public disclosure of the design anywhere in the world. A few countries are not members of the Paris Convention, and special consideration must be given to filing applications in such countries to avoid loss of design rights there.

The Hague System for the International Registration of Industrial Designs provides a simplified procedure enabling applicants to obtain patent protection in multiple countries through filing a single application. However, each country will still separately examine the application for compliance with its local law and, in some cases, different countries have potentially contradictory practices which can complicate use of the Hague System.

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