A Guide to Industrial Designs

Registering your Industrial Design

• When to file an application
• Why you should register
• Who can apply
• Before you file
• What you cannot register
• How long the process takes
• How long registration lasts
• Fees
• Getting help with your application
• Preparing your application
• The application form
• The title
• The description
• Drawings and photographs
• Variants
• More than one design

When to file an application

There is no time limit for filing an application as long as the design has never been published. The term "published" in this context means that the design has been made public (even to your neighbours) or offered for commercial sale or use anywhere in the world. If the design has been published, you must file within twelve months of publication.

In making a decision about whether your design can be registered, the Industrial Design Office may ask for further information. Such information may be needed if it appears that:

• the design is not applied to a fully assembled finished article or set;
  
  
• the design features are dictated solely by the article's function; or
  
  
• the description portion of the application describes functional or manufacturing aspects rather than visual features.

Why you should register

The advantage of registering your industrial design is that it gives you exclusive rights to your design. Registration enables you to prevent others from making, importing for trade or business, renting or selling or offering or exposing for sale or rent any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied, for up to ten years from the date of registration. Keep in mind that unless you register your design, you can make no legal claim of ownership and have no legal protection from imitation. This is different from trade-mark and copyright protection, which allow you to claim ownership even without registration.

Who can apply

Only the proprietor of a design may apply for and obtain registration for an industrial design. Usually, you are considered the proprietor if you have created the design. However, if you have been hired under contract to develop a design for someone else, then that person is the proprietor and is the only one entitled to apply for registration. If you work together with other people to create a design, you should file for registration as joint proprietors (unless you are all working under contract or commission).

If you have acquired ownership of a design, then you may apply.

If you are an employee of a company and develop a design as part of your employment, then the employer is considered to be the proprietor. In that case only the employer may apply.

Industrial design registration is valid only if applied for and obtained in the name of the proprietor. You will save yourself time and expense by resolving the issue of ownership before applying for registration.

Before you file

Prior to filing an application, you may wish to conduct a search of Office records at CIPO's Client Service Centre in Gatineau, Quebec, in order to better determine whether your design is truly new and original. Staff will explain search procedures to you but will not conduct the search for you. This will give you the opportunity to see other registered designs. You should also keep your design confidential.

What you cannot register

You cannot register the following under the Industrial Design Act:

• a method of construction;
  
  
• an idea;
  
  
• materials used in the construction of an article;
  
  
• the function of an article (see discussion of patents in The Basics); or
  
  
• colour (although one can protect a pattern created by an arrangement of contrasting tones).

How long the process takes

Pursuant to a provision of the Paris Convention, an international treaty signed by Canada, the Office does not register any design until six months after the priority date (if filed earlier in another country) or the Canadian filing date, whichever is earlier.

The Office examines applications on a first-come, first-served basis. If your application is properly prepared, registration will occur as quickly as possible. But if the application is not complete or incorrectly completed, the process will take longer, in which case the speed of registration will depend very much on how quickly you respond to queries and requests for changes.

You may be granted faster service if you believe that your design has already been imitated by someone else. In such a case, the Office will proceed with the examination as soon as you submit a request for accelerated examination and the prescribed fees.

How long registration lasts

Registration is for a ten-year term beginning on the date of registration. However, before the expiry of five years and six months from that date, a maintenance fee must be paid or the protection will cease. Once the ten-year term has expired, anyone is free to make, import, rent or sell etc., the design in Canada.

Fees

You must pay a fee to have your application examined by the Industrial Design Office. Fees are subject to change without notice. Payment may be made by VISA, MasterCard, Interac, cheque or money order made payable to the Receiver General for Canada.

Getting help with your application

You may file your own application for industrial design registration and the Industrial Design Office will give you the basic information you need to do so. The Office will not, however, prepare your application or conduct a preliminary search of existing designs for you.

The Office will not express an opinion about the aesthetic or commercial merits of your design or tell you in advance of filing whether it qualifies for registration.

Drafting an application requires much careful attention to detail and knowledge of the regulations. For this reason, you may wish to hire a patent agent to prepare and "prosecute," that is, to follow through on your application. Most industrial design applications are done in this way. Patent agents are experienced in the field.

You may obtain a list of patent agents by contacting the Client Service Centre. The Centre will not recommend any particular agent and does not regulate their fees.

Preparing your application

An application for registration of an industrial design has three basic elements which are required by the Industrial Design Act and Industrial Design Regulations:

• the application form;
  
  
• at least one drawing or photograph of the design; and
  
  
• the required fee(s).

The application form

The application must include the information prescribed by the Industrial Design Act and Industrial Design Regulations.

You will find an example of an application form in Appendix B [PDF] of this guide. It may also be obtained free of charge from CIPO's website, the Client Service Centre or from a regional Industry Canada office.

Remember the following important points when you complete your application:

• Only the current proprietor can file an application. The application form includes a declaration that you are the proprietor of the design and that, to your knowledge, no one else used the design before you or the first proprietor.
  
  
• Your application form must also include your name and complete address, the title of the article, the description, and the name and address of a representative for service in Canada, if you have no office or place of business in Canada.

Send the completed application to:

Industrial Design Office
Canadian Intellectual Property Office
Industry Canada
Place du Portage I
50 Victoria Street
Gatineau QC  K1A 0C9

Note: You can also submit your application electronically through the CIPO website.

Any correspondence addressed to the Industrial Design Office at CIPO Headquarters in Gatineau and delivered:

1. during business hours to CIPO Headquarters, will be accorded the date of receipt that day;
2. during business hours to Industry Canada Headquarters or to one of its regional offices, will be accorded the date of receipt in that office*;
3. at any time electronically, including by facsimile, will be considered to be received on the day that it is transmitted, if received before midnight, local time, at CIPO Headquarters*; or
4. through the Registered Mail Service of the Canada Post Corporation (CPC), will be accorded the date stamped on the envelope by CPC*.

*Only if it is also a day on which CIPO Headquarters in Gatineau is open, if not, it will be considered received on the next working day.

The title

The application must include a title that identifies the finished article to which the design is applied. It should be the common name generally known and used by the public (for example, "lighter," "chair," "spoon," "t-shirt").

The description

Your application must include a description which identifies the features that constitute the design.

The description, along with the drawings and title, must provide an accurate picture of the design. The following information must be clearly conveyed:

• the features of the design; and
• the article of manufacture to which the design is applied.

Your description must clearly identify the features and where they reside in the article. Only visual features of the design are to be described, i.e., features of shape, configuration, pattern or ornament (or any combination of these features). The description must not refer to how the article was made, what it is made of, how it functions, its size or its dimensions.

The design may reside in the entirety of the article, or just in a portion of the article. For example, you may wish to protect the shape of the entirety of a chair or you may wish to protect only the shape of the arms of a chair.

You may choose to provide a brief description which simply but clearly states what the design is comprised of by identifying the features and indicating if such features reside in the entire article or just in a portion of the article. For example: a) "The design consists of the features of shape of the arms of the chair as shown in the drawings."; b) "The design consists of the features of shape, configuration, pattern and ornamentation of the entire chair as shown in the drawings."

Or, you may choose to provide a detailed description which accurately describes features in detail using geometric or similar descriptive terminology. For example: "The design consists of generally rectangular arms with a convex upper surface and concave lower surface, a longitudinal groove extending the entire length of each arm on the outer side edges."

Figure reference: Where the drawings or photographs contain more than one figure, a figure reference should be included at the end of the description. It serves to identify what view is seen in each figure. For example: "Figure 1 is a bottom view of the chair."

Keep in mind that you or your agent are responsible for giving an accurate, adequate description of your design and to ensure that it covers all of the original features of your design. The Industrial Design Office will only ensure, for the purposes of assessing registrability, that your wording is clear in conveying what the design consists of and that it accurately reflects what is shown in the drawings or photographs.

Specific things to keep in mind when writing your description:

• Reference must only be made to visual features, and not to features of function or construction. For example, a distinctive tread on the sole of a boot may have functional properties (to prevent slipping) as well as visual appeal (it's in the shape of a snowflake), however, the description must refer to only those features that are visual.
  
  
• It is acceptable to highlight particularly significant features for emphasis. For example: "The design consists of the features of shape of the arms of the chair as shown in the drawings. The most significant feature is the diamond-shaped recess on the top surface of each arm."
  
  
• Whichever method you use to describe your design, it must be clear whether the features reside in the entire article or just a portion of the article.
  
  
• Since the courts may use your description to help determine the limits of protection for your design, you should word your description with care and precision. If your description is too broad, you may overextend the scope of the design, and it may be impossible to enforce. If it is too narrow, you may limit the scope of the design or leave out features that you intended to protect.
  
  
• More information on the subject of descriptions is available in the "Industrial Design Office Practices".

Drawings and photographs

Your application must include at least one drawing or photograph of the design as applied to the finished article of manufacture. The title, description and drawings must provide an accurate picture of the design.

A) Content:
All views in the drawings or photographs must show the complete finished article in isolation. The article must be shown alone against a neutral (blank) background. Your drawing(s) or photograph(s) should show every feature of the design as applied to the article. You may use stippled or broken lines to disclose portions of the article that are not part of the design, but the design must be shown in solid lines.

The title, descriptive matter, dimensions or name should not be included on the drawing, but you may put your signature (as proprietor) on the lower right-hand corner of each sheet.

B) Quality:
Drawings or photographs must be of sufficient quality for clear reproduction by photography, electrostatic processes, photo offset and microfilming. The features of the design as identified in the description portion of the application must be shown clearly and accurately.

C) Scale and orientation:
All drawings must be sufficiently large so that all features of the design are clear and apparent.

Generally, it is appropriate that all views have the same scale (except for enlargement views) and that all views appearing on the same page are oriented the same way. Usually, the views are arranged so that the top of each view is oriented towards the top of the page. Different views must not overlap each other.

D) Number and type of views:
Your drawings or photographs should include as many views as are necessary to adequately disclose the features of the design. The Office will request removal of unnecessary or extraneous views which would merely clutter the Register. The conventional views are: perspective, front, back, top, bottom, right side, left side.

Each view should be numbered. They are usually referred to as: Figure 1, Figure 2, etc.

E) Miscellaneous views:
Occasionally, you will need to include the following views to adequately disclose features that cannot be shown in the conventional views: views showing open and closed positions, cross-sectional views, fragmentary views, views showing indefinite length and repeat patterns.

Remember that the purpose of the drawings or photographs is to show clearly and accurately the features of the design. More information on the requirements for drawings and photographs is available in the "Industrial Design Office Practices".

Variants

Each industrial design application must be limited to a single design or to "variants" applied to a single article or to a set. Variants are designs which do not differ substantially from one another. To be accepted as variants, the designs must be applied to the same article or set and must possess the described features without substantial variation. You may add variants of the design to your application any time before registration.

More than one design

If you include designs in one application that differ to a substantial degree, an objection will be issued. You will be asked by the Industrial Design Office to choose one design and delete the rest from the application. You would then have the option to file a new application (with filing fees) for any design deleted from the initial application. In this case the filing date of the new application will be the same as the initial application.

A Guide to Industrial Designs
| Table of Contents |
| Introduction | The Basics | Registering your Industrial Design | The Process |
| Other Procedures | For More Information | Tariff of Fees | FAQ | Forms | Glossary |