The experienced team at Stemp & Company offers a full suite of industrial design patent services.
At Stemp & Company, we offer assistance with the preparation and filing of design patent applications, as well as handling the prosecution of the application. If you require assistance in developing your patent or just need your industrial design patent filed, our team of discerning lawyers can help you.
We also offer consultations for those looking for more information on industrial design patents and help businesses and individuals who have had someone infringe on their design patent.
What is Industrial Design Registration?
In Canada, an industrial design registration is equivalent to the type of intellectual property protection provided by a design patent in the U.S. Canadian industrial design rights can be secured by registering the design at the Canadian Intellectual Property Office (CIPO) and are regulated by the Industrial Design Act and the Industrial Design Regulations.
Industrial Design rights protect the aesthetic value or visual appearance of a product, including special ornamentation, features of shape, colour, and 3-dimensional design of a product. Industrial design rights are about how a product looks, not what it’s made of, how it’s made, or its functionality. You can protect part of your design or the entire finished article.
Examples of items that you would protect by way of industrial design registration are board game designs or layouts, containers (Coca Cola bottle), or consumer products such as video cameras. In Canada, the initial period of protection is five years and the industrial design registration can be renewed for up to 15 years.
When an industrial design is protected, it means that you have the exclusive right to prevent your competitors from making, selling, importing and otherwise using your design or a product with a very similar design for commercial purposes.
Benefits of an Industrial Design Registration
Industrial design protection is an important factor in ensuring your business’ success.
Protect Your Investment
Businesses and manufacturers often invest a lot of time, money, and resources into developing unique and appealing designs of their products. A new, successful design is a valuable piece of intellectual property. That’s why businesses should consider protecting the design they put so much effort into developing.
Gives a Competitive Advantage
If you are successful in your application to protect your design, you are awarded the exclusive right to manufacture and sell that product for specific periods of time (these vary depending on the country). Offering a unique product that your competitors don’t have access to could give you a competitive edge in the market and lead to more revenue for your business.
Helps Attract Investments
Any form of intellectual property such as an industrial design registration is an asset that can create significant value for your business. This type of asset can help your business attract investors and business partners. You can also use the design registration to create a source of revenue for your business by licensing, selling, or using it as collateral to secure a business loan.
Industrial Design Process
If you have a product which has a particularly unique visual appearance, and you wish to have exclusive rights to that visual appearance or design, you need industrial design protection. You can arrange for an application to be prepared and filed on your behalf in whichever country you intend to sell your product.
Timing is important when applying for industrial design registration. The CIPO will only register new designs, but if you have launched a new product, you have a 12-month grace period where you can apply for design protection. Also, applications are kept confidential until 30 months after the filing date. After this time, the content of your application will be available to the public, so it’s important to coordinate the launch of the product with the timing of the industrial design application.
In Canada, the steps to register your industrial design.
- Check that your design is unique. Before you file your application, you can run a free search in the Canadian Industrial Designs Database for existing, similar designs to ensure that your design is novel.
- Decide where you want protection. Your industrial design protection is only valid in the jurisdiction where you applied. Depending on where you plan on marketing and selling your product, you might want to consider Canadian and international registration at the relevant country’s intellectual property office (IPO).
- Registration in Canada. If you want industrial design protection in Canada, you file an application at the CIPO.
- Hague System registration. You can also apply for industrial design protection through the Hague system. International design applications under the Hague agreement means that you can secure design protection in multiple countries at the same time.
- Maintenance of Industrial Design Registration. To keep the design rights beyond the initial 5 years, you must pay a maintenance fee within 5 years of the date of registration.
Intellectual property law is complex and the process of applying for industrial design protection can be time-consuming and confusing. An experienced intellectual property lawyer, patent agent, or trademark agent can help you navigate the process of protecting your invention.
Industrial Design vs. Other Types of Intellectual Property
Industrial Designs are referred to in the United States as “design patents”, while the term “utility patent” is used in the United States where Canadians use the term “patent.” Whenever you see the term “patenting the design,” especially in American literature, this is a reference to protecting the outward or external appearance of a product.
A registered industrial design is different from other types of intellectual property such as patent, trademark, and copyright. A patent protects a novel product or an innovative, useful improvement of an existing product. Trademarks protect the distinguishing features of a brand or product, such as slogans, logos, sounds, and designs. Copyright protects original, creative work such as literature, music, and theatre.
While different aspects of a specific invention might be protected by all of these forms of intellectual property rights, registered design protection focuses on the design features and the look of a product.
How well does industrial design protection work?
Industrial design protection is not terribly strong due to the nature of industrial design. What you are attempting to protect in your industrial design registration is the outward appearance of your product, but not the method of operation, the function which your product performs, or the benefit derived from it. It is only the appearance that is being protected and nothing else.
If someone else were to design a product that performed a similar function, but which looked quite different from yours, there would be little you could do to prevent a similar product from being sold.
Our Industrial Design Protection Services
At Stemp & Company, we specialize in intellectual property law and can help advise you on industrial design protection, protecting your trade secrets, and any other intellectual property or patent law matter. With over 40 years of experience, we have the knowledge to effectively help you with any intellectual property matter, whether you do business in Calgary, Edmonton, Toronto, Ottawa, Vancouver, or internationally.
Industrial Design Applications
If you’re considering applying for an industrial design patent, we can help you prepare and file the application in the relevant jurisdiction. Stemp & Company can help you prevent frustrating delays and rejections by getting the intellectual property application right the first time.
Intellectual Property Enforcement and Litigation
If a competitor is infringing on your industrial design registration or patent, we can help you enforce your rights. Our lawyers are experienced within intellectual property enforcement and responding to patent infringements. We can advise you on the most effective and cost-effective approach to protecting your rights and property.
If necessary, Stemp & Company can help fight for your intellectual property right at all levels of court, including the Court of Queen’s Bench in Alberta and the Federal Court.
Contact our office in Calgary, Alberta today to book an appointment or to learn more about our industrial design registration and patent services.
Frequently Asked Questions
Are there any aspects of a design that can’t be protected by industrial design registration?
Yes, there are certain aspects of an industrial design that can’t be protected by industrial design registration in Canada, including a design idea, the materials used to design the object, the construction method, and the function of the object.
Are drawings or images of my registered industrial design protected as well?
If you plan to use a two-dimensional rendering or drawing of your product (such as packaging or other advertising or promotion material), we recommend that you apply to register that two-dimensional rendering as a trademark under the Canadian or United States TradeMark Acts, rather than under the Industrial Design Act.
This is a way of protecting the way your product appears when the appearance of your product is used in marketing, as opposed to protecting the actual shape itself of the product.
Does an industrial design registration last as long as a trademark?
In Canada, a trademark is registered for an initial period of fifteen years and may be renewed again and again, as long as you are making active use of it. With an industrial design, the maximum period of protection in Canada is ten years: an initial five year period, plus an additional five-year term when renewed. No further renewals of industrial design are possible beyond this ten year period, whereas perpetual renewals are possible with trademarks.
Should I patent my invention instead?
If the shape or appearance of your product influences its method of operation or function, then we usually recommend that a patent be pursued. Wherever you have the option of protecting your product with a patent or by industrial design, we always recommend a patent, as protection under a patent registration is stronger than an industrial design registration.