(1) Design Disclosure
The process begins with the proprietor (designer) sending drawings or photographs of the design they would like to protect. The Canadian industrial design office has very specific requirements for design drawings. Accordingly, unless provided with line drawings that meet CIPO’s requirements, we will engage our draftsperson to create drawings that properly protect the design.
(2) Prior Art Searching
While a search to determine novelty in a design is possible, unlike with patents, we do not generally recommend conducting a search. This is because searches are quite labour intensive and therefore the price of a search is often the same or more expensive than filing the design application. Once the design application is filed, CIPO will conduct a search for you. Accordingly, it is usually more cost efficient to file a design without a search than to first conduct a design prior art search.
(3) Design Foreign Filings – Hague vs National/regional filings
Once the design application has been drafted, a decision must be made as to where to file first. Under the Paris Convention Treaty, the applicant has six (6) months from the date of filing to file a first design application in a Convention country to file in all other foreign jurisdictions. Most countries are signatory to the Paris Convention.
If you are interested in filing in multiple countries, it makes sense to file a Hague Application, either as a first application or within six (6) months of your first application. The Hague Application will be examined for formalities at the International Stage and then each designated country will conduct its own substantive examination.
Upon filing a Hague Application, each country or jurisdiction you wish to enter must be designated. Accordingly, it may be advisable to file in a Paris Convention country first, to delay this decision for six (6) months.
(4) Prosecution Phase
After you have filed the design application, a design is not automatically registered. The industrial design office will examine the application and determine whether the design is registrable. They will search prior art and may cite a similar design against the design application. If there are no issues with the design application, the design will proceed to registration.