Industrial Designs
4. Protection in Other Countries
It is not possible to obtain an "international" industrial design registration. Protection must be sought independently in each country where you would expect to sell product and/or license a design. There is an international treaty in place, to which Canada is a signatory, which will allow applicants to follow-up the filing of an initial application for an industrial design in one country with subsequent corresponding filings in other countries where protection is desired. By virtue of this treaty, applicants will have a period of 6 month from the date of the filing of the first application (in any country) in order to follow-up in subsequent countries and to obtain the filing date of the parent application. This allows an applicant to defer the cost of corresponding filings for the 6 months period, and to have an entitlement under a first to file system based upon the filing date of the original application. Moreover, applications in other countries (which are filed within the 6 month period) will not be novelty barred by any public disclosures or sales made of the design during that time period. If the 6 month period has expired before an applicant files all of the applications which it seeks, then it will be necessary to revert to the novelty requirements in each country in order to determine whether or not a design registration would be statute barred in any particular country.
In the United States it is possible to obtain protection for the visual features of a design in a manner generally analogous to filing an industrial design application in Canada. This is protection is obtained by filing and prosecuting an application for a "design patent", (as opposed to the more familiar "utility patent" for functional inventions such as machines, gadgets, etc.). A design patent offers protection for a period of 14 years (without the need for renewal or payment of maintenance fees), and it can be enforced throughout the United States. A design patent application can, within the 6 month treaty period mentioned above, be filed to claim priority from the first regularly filed industrial design application for the same design.
If you are interested in protecting your industrial design in other countries, please let us know, and we can provide you with more detailed advice and cost estimates to further your particular business plan.