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Design Protection Should Not Be Overlooked

April 25, 2018

There are many options for intellectual property protection. One form of IP that is sometimes overlooked is design protection. Design protection can be a valuable part of an overall IP strategy. It can also act as a cost-effective alternative to utility patent protection in some scenarios.

Design protection, more formally an “industrial design registration” in Canada and a “design patent” in the United States, allows the way a finished article looks—whether that means shape, configuration, pattern, ornament, or the combination thereof—to be protected for at least 10 years.

In order to obtain design protection, an application is filed including drawings or photographs of the article for which protection is sought. The application will then be examined against certain formal requirements and to determine whether it is “original” (Canada) or “non-obvious” (USA) when compared to designs that were available to the public before the application was filed. If an examiner is satisfied the various requirements are met, then an industrial design registration or design patent will be granted.

Design protection is flexible and can be obtained for a very large variety of products of industry. Registered Canadian industrial designs protect a wide variety of protects including household articles like kitchen gadgets and furniture, aspects of computer systems like screen displays and icons, and other items as varied as golf clubs and automobiles.

A registered design can be enforced against look-alike counterfeits as well as similar articles if they do not differ substantially from / are substantially the same as the registered design. Remedies for infringement of an industrial design may include an award of damages and/or an injunction against the infringer. 

A registered design can provide valuable protection for a new product with an innovative aesthetic. A complete IP strategy for a product can also include layering of design and utility protection, with the former protecting how the product looks and the latter protecting how it works. Where there is concern about the viability of obtaining utility protection for a product, a concurrent design filing can also act as a backstop in case a utility patent application encounters resistance in the Patent Office.

Further, because design protection is particularly affordable, it may be an option where business considerations do not allow or warrant filing a utility patent application for a product. Indeed, the cost of procuring design protection is typically close to the cost to obtain a trademark registration.

In summary, design registrations can offer valuable protection at an affordable cost and should be considered by anyone planning to launch a new product.

Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to industrial designs or any other intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.