Engineering design companies are experts in adding beauty to a functional product. Often, especially for products having a well-known use, the beauty and distinctiveness of the product is its primary selling point.
Industrial design (referred to in some jurisdictions as “design patent”) protection attaches to features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.
Protecting a beautiful article can be a vital step in the product development cycle.
A registrable industrial design is generally one that is not identical with or does not so closely resemble any other design already registered as to be confounded therewith and not published more than one year prior to filing.
An application for industrial design registration is made by filing drawings and a description of the design along with a declaration and filing fee. The application should only claim one design though it may comprise several variants.
A filed application undergoes examination. In most cases, examination consists primarily of formal requirements, such as ensuring that the description and drawings are sufficiently clear and that the application does not claim more than one design.
Allowance and Registration
An application will be allowed provided it proceeds through examination. Once allowed, the applicant can pay a registration fee upon which the application will be issued and published. Should the applicant wish to file further applications (for example, further Canadian applications for another design shown in the drawings or corresponding foreign applications), the applicant can delay registration for a limited time to preserve such a right.
Foreign Industrial Design Applications
In many cases, an applicant will want to effect the filing of foreign industrial design applications, which Bhole IP Law is not directly entitled to file. Bhole IP Law, in these cases, will engage foreign counsel to conduct filings on the client’s behalf.
If foreign filings are required, clients should be cognizant that instructions to file should be provided well in advance (ideally at least 2 weeks in advance) as foreign counsel may need to obtain certain information regarding the applicant and the application to comply with local practice.
Additionally, in most cases, Bhole IP Law will require the client to provide a fee retainer to cover the fees of the foreign filing prior to providing instructions to foreign counsel.
In certain cases, the filing of a trade-mark application in one jurisdiction provides an applicant a six month window to file corresponding foreign applications. In such cases, the later-filed foreign application will be evaluated as if filed on the earlier filing date.