What is the difference between a patent and an industrial design?

Industrial design registrations, or “design patents” as they are called in the United States, protect what is called “applied art” - aesthetic features of shape, configuration, pattern or ornament applied to a finished article. This is in contrast to regular “utility” patents, which protect typically structural or functional features of inventions.

Registered industrial designs in Canada provide exclusivity for 10 years from the issue date. In order to maintain protection for the whole term a renewal fee must be paid after 5 years to maintain the registration in force for the second 5 years.

The article to which the design is applied or labels or packaging for the article should be marked with the capital letter “D” in a circle and the name of the proprietor to maintain the right to obtain damages from any infringer.

What are the requirements for design protection?

A registrable or patentable “design” has the following characteristics:

(a) it is directed to proper subject matter namely features of shape, configuration, pattern or ornament applied to a finished article that appeal to and are judged solely by the eye;
(b) it is new meaning not in use by any other person at the time it was adopted and not identical with or so closely resembling any other design already registered as to be confounded (“confused”) with the prior design.

No protection under the Industrial Design Act can be obtained on:

(a) features that are dictated solely by a utilitarian function of the article; or
(b) any method or principle of manufacture or construction; or
(c) any design that is contrary to public morality or order.

How long do I have to file for protection?

To be assured of maximizing your international design rights, an application must be filed in at least one country before there is any non-confidential disclosure, or any offering for sale or any non-confidential use of the design. If this is not done, you will run the risk of forfeiting the potential rights in most, if not quite all, countries. The details will depend on the laws of the particular country and on the precise details of the non-confidential activities. Non-confidential disclosures can arise as through promotion and advertisement, release of literature, internet publication, sales, offering for sale, trade shows, etc. and can sometimes occur even if only one other person is involved. It is therefore very important to make appropriate decisions as to the design rights you might want before any such activities occur.

In some countries, there are grace periods for certain types of non-confidential activities. As two important examples, in Canada and the United States, there are grace periods of one year which permit limited public disclosure and test marketing before the filing of a design application. If the grace period for a particular country is allowed to pass without filing an application in that country, then the potential rights will be forfeited in that country as well.

If design protection is desired in foreign countries, applications eventually must be filed in those foreign countries. Most developed countries of the world are signatories to the Paris Convention, which provides that any application filed within 6 months of the first design application is treated as if it had been filed on that first filing date. Confidentiality agreements are usually advisable prior to the filing of a design application, not only to preserve the design rights, but also to protect against misappropriation of information by persons to whom the information is disclosed.