In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of a manufactured article. An industrial design consists of three prominent dimensional features, such as the shape of an article, it's configuration and ornamentation or two dimensional features, such as patterns, lines or color. An industrial design is about how it looks. An industrial design protection protects a product's unique appearance and not what it is made of, or even how it is made or how it works. So shape takes preference.
Industrial designs can be found in many everyday products, such as the unique shape of a car headlamp, the graphical user interface on a mobile device, or the specific shape or pattern of your favourite massage chair.
An important criterion of an industrial design is that its form must follow its function. You will not design a chair that is not comfortable to sit on. It should also be visually appealing because first impression counts as far as a product for sale is concerned. Good industrial designs can give a product a competitive edge in the marketplace. Consumers are often drawn to an eye-appealing product first before anything else. The next criteria will be the functions and if it is designed with many functions, the better it is for a given set of price. A novel design is considered to be valuable intellectual property and it should be protected as far as possible. You do not want to see others copy it.
For industrial designs to be registrable, there must be newness. It should not be disclosed to the public anywhere in Malaysia or in other countries and it must not be the subject matter of another application for registration of an industrial design filed in Malaysia, but having an earlier priority date.
An industrial design may consist of three-dimensional features such as the shape and configuration of a shampoo bottle, or two-dimensional features of a jewellery piece.
The Malaysia application of an industrial design only cover one appearance for an item. In order to cover multiple designs or patterns and colour schemes, a separate design has to be applied. Designs are for whole articles and no part of it is registrable.
Malaysia allows for multiple application industrial designs as long as all goods applied for belong to the same class of the Locarno International Design Classification.
Applications are accorded a formal examination to make sure all paperwork is in order and then an extensive examination to see whether there is any novelty merit or not. Once when the examination is complete and the examiner is satisfied that the subject design is novel, a registration certificate will be issued taking anywhere from eight to fifteen months after the filing. Industrial designs are protected for five years from the filing date of the application, less if there is an earlier priority date and the protection is renewable for four additional five-year periods: meaning that total protection can last for up to 25 years.
Distinction between an industrial design and a patent
An industrial design right protects only the appearance or aesthetic features of a product, whereas a patent protects an invention that offers a new technical solution (workings) to a problem. In principle, an industrial design right does not protect the technical or functional features of a product but if there is such a process, then it should also be protected by a patent.
In most countries and also in Malaysia, an industrial design needs to be registered in order to be protected under industrial design law as a "registered design". In some countries, industrial designs are protected under patent law as "design patents" like that in the US. Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law. Industrial design rights are granted for a limited period. The duration of the protection of industrial designs varies from country to country, but it amounts at least to 10 years like in Malaysia. In many countries, the total duration of protection is divided into successive renewable periods with the payment of extension fees.
In the United States of America, industrial designs is known as Design Patents. Although it is taken as a common view that industrial designs value is less than that of a patent, a new intepretation of the value of design patent is publicise by the recent US case between Apple verses Samsung, 137 S.Ct.429 (2016), where the the court decided to award Apple USD 533 million for infringment damages (design forms). Overnight, the value of design patent becomes higher than that of a patent! And as if the tide has turned for the better for design patents, there was an overall increase in the number of design patents filing in the US.
Can you convert your Industrial Design to a Utility Innovation - now that is interesting?
If you ask your normal patent agent about converting your Industrial Design to a Utility Innovation (minor patent),they will shake their head and tell you that is impossible! An Industrial Design is a outword form of of your product and they have no internal features that turns a process or work on something. But at Iskandarproject, we can (in certain cases) convert your Industrial Design to a Utility Innovation model or even a Patent Model, no less! We will help you to invent a process in your Industrial Design so that you have a higher value for your intellectual property. And don't be surprised that you will have a new product to offer to the market, not to mention that that might give you a new lease of life! Think about diversification, well, get to us as soon as possible as you are well aware that this is a very competitive world where you would not be able to survive if you don't throw in some innovation. What more with Industry 4.0 coming to the store near you! And we have helped many entrepreneurs to convert their initial Industrial Designs into Utility Innovations.