We’ve designed something: How do we protect it?

Really, really quickly. Especially your off-shore competitors.

What kinds of protection are possible for your design? And how will you enforce that protection once you’ve got it?

There are four basic forms of intellectual property protection you can obtain for a new design – a patent, a trademark, an industrial design registration and a copyright. The type of intellectual property protection will depend on the type of design. This month, we’ll be discussing industrial design registrations.

An industrial design registration (called a Design Patent in the U.S.) will protect the features of shape, configuration, pattern or ornament applied to an article. The design must be original, and have features that appeal to the eye. This form of intellectual property protection is not meant to protect the useful features of your design (for example, if you’ve designed something so that it is easier to hold), but, to some extent, it does protect this, insofar as your design inherently provides that use – for example, if there’s a specific curve on your product that gives it a unique and characteristic shape, but also happens to make the product easier to hold, it would be protected. Some good examples of industrial designs that can be registered are:

• the ornamentation on the end of a fork or spoon
• the shape of a funky new chair
• the shape of a watch hand
• a new fabric pattern
• a new doorknob
• the configuration of a dashboard

An industrial design registration allows you to prevent others from making, importing, selling, renting, or offering for sale or rent any article that has a design that does not differ substantially from the one you have registered. Whether something “differs substantially” is something left up to the court, but the good news is that shameless knock-offs will usually be identical (it takes a fair bit of effort to make something “similar” but not identical), so at least you’ll be protected from those.

The nice thing about industrial design applications is that they are easy, and relatively cheap, to file. You simply provide the intellectual property office with drawings of your design, and a brief description of the drawings. This means that it shouldn’t take longer than a day or two to get the application filed – unlike a patent application, the filing can be put together in no time, and very little effort.

In Canada, industrial design registrations typically take 1-2 years to obtain, and cost, from beginning to end, is typically in the low thousands. An industrial design registration lasts 10 years, meaning you get 10 years of protection from the date it is registered. An industrial design application should be filed before the product has been “published,” or made available to the public.
Of course, like all intellectual property, it’s expensive to enforce if you have to go to court. But there are all sorts of things you can do before that. You can mark your product as protected (typically, with a small “D” in a circle, or the term “registered design,” along with the name of the owner of the design.

You can inform your suppliers and retailers that the design is registered. You can send letters to suppliers, retailers or manufacturers informing them of your design rights. These strategies are often effective. And for cases where the knock-offs are really hurting your bottom line, you can initiate legal proceedings against the infringer. Like most legal actions, these cases are often settled before the expense of a trial.

Industrial design protection isn’t the only protection that can be obtained for your design. Industrial design rights often overlap with other protection that may be available. Next month, we’ll be exploring protecting your design with patents.

This is the second article in a series that discusses real-world intellectual property issues for non-patent professionals. (Click here for next article)

The series is meant to provide the business manager with some insight, context and useful tools for how to deal with patent-based issues on a business level. This article is not legal advice or opinion. Intellectual property issues are complex and often unique circumstances need to be considered. Consult your intellectual property professional before making any decisions based on the educational information provided below.

Charles Boulakia, M.Sc., MBA/LLP., is a patent attorney with the Toronto-based IP firm Ridout & Maybee LLP (cboulakia@ridoutmaybee.com).
www.ridoutmaybee.com