Patents vs. registered industrial designs

Edith: What is the best way to protect my product from being copied? Should I invest in a patent or a registered industrial design? What's the difference? Different IP rights can protect different aspects of your product and should be acquired and monitored to maximize their value. Choosing the wrong type of IP could be costly.

Hello, my name's Edith Penty Geraets and I'm a European and UK Patent Agent, practicing in Gowling WLG's Vancouver office. Before applying for a patent or registered design, or both, it's important to understand the difference between the two. Here are five things inventors and designers to need to know about patents and registered industrial designs to choose the most suitable IP rights for their innovative products.

Number one, what is patent protection? Patents protect technical innovations. For example, innovations in science and technology. Patents can be granted for products, compositions of matter, for example ... substances, devices or processes, for example methods of use or methods of manufacture. In general, to be eligible for patent protection a technical innovation must be novel, inventive and industrially useful. Purely esthetic features of a product are not eligible for patent protection and instead may be suitable for protection in a registered industrial design.

Number two, what is a registered industrial design? Designs protect the visual features of a product including shape or form, configuration, pattern and/or ornamentation. In some countries registered industrial designs are referred to simply as registered designs or as design patents. So the terminology and registration requirements can be confusing. In most countries to be eligible for registered industrial design the design must be new and substantially different from existing designs. Many countries also offer a 1 year grace period where disclosures made by the designer in the 1 year prior to filing application are not considered detrimentally when determining if a design is new and substantially different.

Number three, what kind of protection do patents and registered industrial designs offer? A patent and a registered industrial design are both IP rights that must be registered in order to obtain legal protection. Patents generally provide border protection than registered industrial designs and capable of protecting many variations of the innovative product or method in a single application. For example, the invention of the lightbulb is one of the earliest examples of patent protection. The patent claimed an electrical lamp for giving light by incandescent consisting of a filament of carbon of high resistance and secures to metallic wires. Although the patent shows a drawing of a round light bulb, the scope of protection defining the patent claim covers all shapes of light bulb. On the other hand, registered industrial design protects the appearance of a product. For example, Apple holds new risk registered industrial designs for their iPhone product, such as for the shape of a Smartphone and the layout of the icons on screen. Because the scope of protection in a registered industrial design is defined by the drawings that are filed competitors can generally avoid infringement by changing the overall appearance of a competing product. However, if an important feature of a new product is its appearance then registered industrial design protection can be extremely powerful. Taking the iPhone example, Apple has successfully enforced several of their registered industrial designs for the iPhone against Samsung's competing Smartphone products. This is an excellent example of how registered industrial design protection can, in certain cases, provide real value to innovators to protect their products and should not always be overlooked in favour of patent protection.

Number four, what should I consider before I expand overseas? It's important to note that a Canadian granted patent, or a Canadian registered industrial design will provide exclusivity to the protected invention or design in Canada only. Before filing applications for a patent or design innovators should consider their overall business plan and decide if they will require protection overseas. Once a patent application is filed there is a 12 month deadline to file patent applications overseas that claim priority on the original patent application. For designs, there's a shorter 6 month deadline to file registered industrial design applications overseas that claim priority from the original design application. Other international filing strategies are also available for both patents and designs which can streamline the filing procedure and reduce costs.

Number five, how much will this cost? Costs can be a significant factor in decision making when considering patent and design protection. Patents can cost in the range of 20,000 up to 100,000 Canadian dollars, from drafting to grant, in a single country. Whereas the costs for registering an industrial design is much lower and typically in a region of around 5,000 to 10,000 Canadian dollars from filing to registration. If you're also seeking overseas protection the costs for both patents and registered industrial design protection can increase significantly. The differences in filing and registration procedure are the primary reason for the difference in cost. A patent application is a detailed technical document describing the invention. The boundaries of the invention are defined in the patent claims and are examined in detail by the patent offices and often require several rounds of written amendments and arguments before a patent is granted. On the other hand, the drawings of an industrial design application are usually registered in the form of the ... and some countries do not examine industrial design applications.

Patent and design rights are both powerful and often complimentary forms of intellectual property protection that can be used to prevent others from exploiting innovative products. The process of securing IP protection can be a long and uncertain to journey. For first time inventors and designers engaging an IP practitioner can increase the chances of success. To learn more about intellectual property law, and to discuss whether your innovation is eligible for patent protection, design protection or both, please visit our website.