Area of Law: Intellectual Property
Answer # 329
Industrial Design applicationsRegion: Ontario Answer # 329
Although applying for an industrial design in Canada seems quite straightforward, submitting an application that will be successful often requires technical knowledge of the application process. If you decide to register your industrial design with the Industrial Design Office of the Canadian Intellectual Property Office (CIPO), you should consider contacting a patent lawyer or a registered patent agent for assistance.
If you wish to register your design in country other than Canada, go to topic 333 Registering your Industrial Design in a foreign county.
What is required in the application?
The application for an industrial design must follow a standard format. While CIPO does not require the use of a particular application form (as per recent changes to the Industrial Design Act), the following information is mandatory:
- The applicants name and address
- The name of the finished article (basically the generic name or the common name, such as fabric, chair, or bottle)
- Representation of a design: drawings or photographs
- Government application fee
The following content may also be included:
- A descriptive statement of the design
- A statement of limitation: an application is understood to relate to all of the features of the design (shape, configuration, pattern and ornament) unless a statement clearly describes only specific features
- A Priority Claim: if protection is being applied for in a foreign country
Descriptive statement of design
If providing a descriptive statement of your industrial design, include a description of the design features that are new and original. Your lawyer or patent agent may write a description that identifies important visual features of the design. The description should describe the design, not the article to which it applies, or how the article functions or performs.
The wording for the description is very important because it may influence whether your design is approved, and if so, how much legal protection it will receive. For example, if the description is worded in very specific terms, the legal protection given may only correspond to those specific criteria that have been outlined. This is why it is so important to hire a lawyer or a patent agent to assist you in preparing your application.
Drawings and photographs
There are specific requirements with respect to the size, quality and detail of the reproductions (drawings) or photographs that you provide with your application. For instance, your application must include at least one representation of your design in the form of a reproduction (drawing) or photograph, and your representation must fully disclose the features of your design.
It is important to make sure that all aspects of your application are correct, including the drawings and photographs, because it is difficult to make changes after you have filed an application.
How to submit an application
Applications can be submitted in one of three ways:
- By mail to the Industrial Design office at CIPO in Gatineau, Quebec;
- Using the CIPO online e-Filing System; or
- Delivering your application in person to one of CIPO’s designated establishments.
Fees can be paid by credit card, direct payment, deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Fee payment forms can be found online at the CIPO Client Service Centre. When submitting online, uploaded copies of photographs and drawings must be attached to the application.
Using a lawyer or patent agent
If you use a lawyer or agent to assist you with the application, you must provide the lawyer’s or agent’s name and address with your as well. CIPO will send communications to them. Otherwise, if no agent has been appointed, CIPO will only communicate with you.
Changes to the Industrial Design Act regarding applications
On November 5, 2018 amendments to the Industrial Design Act and Regulations came into force making it consistent with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System), significantly modernizing Canada’s industrial design system.
Changes to the Act regarding applications include:
- designs no longer need to be shown applied to a finished article
- applications are no longer limited to a single environmental view
- visual representations in colour are permitted
- once the design is registered, the maximum term of exclusive right of a design is increased from 10 years to 15 years
When registering for an industrial design in a foreign country, the Hague System allows individuals to acquire, maintain and manage design right:
- for up-to 100 designs (belonging to the same class of the International Classification for Industrial Designs (the Locarno Classification),
- in 73 contracting parties covering 90 countries, and
- through a single international application.
For more information, refer to the Canadian Intellectual Property Office.
For legal assistance with your industrial design application, or other intellectual property matters, contact our preferred lawyers and see who’s right for you:
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