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Registering an original industrial design has a significant impact on how it is marketed. When you are the owner of your industrial design and have obtained its registration from theIntellectual Property Office (OPIC), you have the exclusive right to the ownership of your design for a period of 10 years from the date of its registration.
As an owner, this exclusive right allows you to prevent any use that a third party may make of your design without your permission.
For this purpose, you have the exclusive right, in Canada, to manufacture, import for commercial purposes, rent or sell the object incorporating this design (the “Exclusive Rights”).
These Exclusive Rights can obviously be very profitable, but care must be taken to distinguish between the two marketing methods provided for by the Industrial Design Act, namely assignment and license.
It is possible to transfer all or part of your exclusive rights to your industrial design. It is in fact a Sale which can be done for a fee or even for free if you are feeling generous! La Industrial Design Act provides that the transfer must be in writing and registered at the Industrial Design Office.
However, you have to be very careful with the transfer. If you decide to transfer all of your Exclusive Rights, whether to an individual or to a company, you will no longer be the owner of your industrial design and you will no longer be able to use it in any way, even in a portfolio.
It is also possible to authorize a third party to Use your design subject to certain conditions. In fact, it is a license to use your industrial design. The fundamental difference between licensing and transferring is that, unlike an assignment, you remain the owner of your industrial design as part of the licensing process.
When negotiating a license, remember to clearly define its duration, the territory covered by the license, what rights are granted and for what purposes. And your remuneration? You may expect the other party to pay you royalties for this use or a fixed fee. Everything is negotiable!
If you are granting an exclusive license, be careful. First, unless you expressly provide for it, an exclusive license granted to a third party prevents you from using your industrial design yourself. Also, you should know that the exclusive license must be written and registered at the Industrial Design Office.
Any questions? Do not hesitate to contact us.
