Industrial Design FAQs
NOTICE: The following information is being provided as a GUIDELINE ONLY and should NOT be considered as legal advice.
What is an industrial design/design patent?
An industrial design constitutes the ornamental or aesthetic aspect of an article. An industrial design is also known as a design patent. These terms are used interchangeably in different jurisdictions around the world.
Who needs an industrial design/design patent?
Anyone who has a business, good, or service can benefit from having an industrial design/design patent.
Who can register an industrial design/design patent?
Any individual or legal entity that owns an industrial design/design patent can file an application to register it. An applicant can be a company, individual, partnership, lawful association, or trade union.
What does an industrial design cover?
An industrial design can consist of three-dimensional features, such as shape and configuration, as well as the two-dimensional features, such as pattern and ornament, lines, or colour. It is possible to obtain protection for the entire design of the entire finished article, or just part of it.
Example 1: The Coca Cola Bottle
Example 2: The Apple iPhone
Example 3: The Gongshow Gear Arm for Eyeglasses
What are the benefits of registering an industrial design?
An industrial design registration grants the owner exclusive rights to that design in the jurisdiction in which the registration exists. Registration of an industrial design prevents the design from being copied and imitated by competitors.
The owner of a registered industrial design has the right to prevent third parties from making, selling, or importing articles bearing or embodying a design that is a copy, or substantially a copy, of the protected design, when such actions are undertaken for commercial purposes.
Industrial designs are business assets that can increase the commercial value of a company and its products and may also be licensed.
What are the risks of not registering an industrial design?
If an industrial design owner does not file an industrial design application within 12 months of making the design public, the owner loses the right to register the industrial design. If an owner fails to register their industrial design during the 12-month period, then anyone is entitled to use the same industrial design.
What are the time requirements to file an industrial design?
In most jurisdictions, an industrial design owner has 12 months from the date of public disclosure to file an application to register their industrial design. An owner risks losing the ability to register their industrial design after the 12-month disclosure period has expired.
In other words, if an owner first publicly disclosed their industrial design on January 1, 2019 (for example, by featuring the design on the company’s website), an application to register the industrial design must be filed by January 1, 2020.
How long does an industrial design registration last?
Exclusive rights to an industrial design typically last from 10 to 15 years depending on the jurisdiction.
When can I use the Ⓓ symbol?
The Ⓓ symbol represents registered industrial design rights and may only be used by the owner once an industrial design has registered.
Where should we register our industrial designs?
Industrial design rights are jurisdictional; in other words, owning an industrial design registration in Canada does not give you protection in the United States. You must file individually to register your industrial design in each jurisdiction in which protection is sought.
What is the Hague Agreement?
The Hague Agreement governs the international registration of industrial designs. The Hague System allows industrial designs to be protected in multiple jurisdictions.
Is there a mechanism to file an industrial design application in more than one country simultaneously?
Generally, an industrial design owner must file an individual application in each jurisdiction in which protection is sought. However, some exceptions include:
European Applications: The European Union Intellectual Property Office (EUIPO) has an inclusive filing system that allows an industrial design owner to file a single application to register their industrial design in the countries that are part of the European Union (Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden).
International Applications: The Hague System for the International Registration of Industrial Designs, also known as the Hague System, allows an industrial design owner to file a single application through the World Intellectual Property Office (WIPO) to register up to 100 designs in 73 contracting parties covering 90 countries. Canada joined the Hague Agreement on June 17, 2019, allowing Canadian applicants to apply for international protection using the Hague System. Filing an international application can be cost-effective for industrial design owners seeking protection in multiple (generally at least five) jurisdictions simultaneously.
What steps are involved in registering an industrial design?
Different jurisdictions have different procedures, but registering an industrial design generally involves the following three steps:
Step 1: Filing
The first stage of the industrial design registration process involves preparing and filing an industrial design application with the Intellectual Property Office of the jurisdiction in which protection is sought. The application lists relevant details, such as owner’s name and address, the representation of the industrial design, and, where applicable, a priority claim. Before filing the application, a search of pre-existing industrial design applications and registrations may also be conducted to ensure that an identical or similar industrial design was not already filed or registered in that jurisdiction. The application is filed after the application details are finalized. After the initial filing, the application will go through a verification process to ensure that it complies with basic filing requirements. If all requirements are met, the Intellectual Property Office will establish the filing date and issue a filing notice.
Step 2: Prosecution
After the industrial design application is filed, the Intellectual Property Office will classify the industrial design in order to assess novelty. After classification, an industrial design examiner will conduct a review of the application to ensure that it complies with formal and substantive requirements. If the examiner feels that there are issues with the application, they will issue an Examination Report outlining their objections to registration. In such cases, the applicant will be given an opportunity to respond to the objections. If no Examination Report is issued, or if objections raised are overcome, the application will be allowed.
Step 3: Registration
Following allowance, the owner will receive a Notification of Industrial Design Registration, a copy of the registration details, showing a representation of the design, and a notice outlining future maintenance requirements. Once the industrial design is officially registered, the owner may legally use the Ⓓ symbol beside the industrial design. A typical registration term is 10-15 years, but the term can vary per jurisdiction.
How long does it take for an industrial design to register after an application is filed?
Registration timelines vary considerably depending on the jurisdiction in which the industrial design registration is sought. The timeline can also be impacted by the specific issues that may arise during prosecution.
On average, applicants can expect the process to take 1 to 2 years.
Is the industrial design registration process expensive?
Costs for registering an industrial design can vary considerably depending on a number of factors. These include:
- The jurisdiction in which registration is sought
- Issues that may arise while the application is being prosecuted
In Canada, costs may be as low as $2000 to $2500 per application. In other jurisdictions, such as the United States and Europe, costs may range from $3000 to $5000. We are pleased to provide cost-estimates and fee breakdowns upon request.
Where can I find more information?
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