Patent vs. registered industrial designs - Understanding the difference - YouTube

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.