We live in an economy where manufacturers constantly strive to protect and increase their market share. Strategic intellectual property protection can be a great way to ensure product exclusivity, but can, and should, a single product enjoy several different forms of IP protection?
One area where this overlap can occur is between industrial designs and patents. Industrial design protection is awarded for a ten-year-term to protect features that “appeal to the eye.” These features can be a particular shape or pattern, for example the shape of a utensil or shoe, and must be original. Section 5.1(a) of the Industrial Designs Act states, however, that no protection will be granted for features that serve “solely” a functional purpose. Patents, on the other hand, provide twenty years of protection for products that satisfy a “utility” requirement, in other words, they must have some functional purpose.
But the subject matter of an industrial design and patent can coincide. Consider, for example, Canadian Patent No. 1,176,566, (see the drawings here and the description here) which protects pharmaceutical tablets manufactured in such a way that one or more edges are always tiled upwards. The advantage is described as being that these tablets can be picked up more easily (presumably to facilitate their use by elderly patients). The patent includes drawings of several different versions of these tablets. As it turns out, several of these tablet designs were actually awarded industrial design protection as well (see, for example, Design No. 49,011).
The tablet design clearly appears to have a functional purpose – the tilt allows it to be picked up with greater ease – satisfying at least part of the requirements for appropriate subject matter for a patent. Perhaps this is appropriate subject matter for industrial design protection as well – maybe the tablet tilt is not there “solely” for functional purposes. Is it conceivable that this design was prepared as a creative feature that “appeals to the eye” and utility was only realized after?
The bigger question is whether overlapping IP is a good or bad thing – should different areas of IP be mutually exclusive or should overlap be allowed? What are the implications? In examples such as the above, an IP owner would have recourse under both the Patent Act and the Industrial Designs Act in a case of infringement. The potential defendant would have to be concerned with infringement under two different pieces of IP legislation even though the basis for infringement would flow from the same concept (the shape of the pharmaceutical tablet).
This overlap is not limited to patents and industrial design. An artistic creation (appropriate subject matter for copyright protection) can also form the basis of an industrial design. The Copyright Act protects such an artistic creation during the author’s life plus 50 years. It also states that copyrighted articles could lose their protection under the Act if they are incorporated into a design and are reproduced more than 50 times. Should both industrial design and copyright protection be allowed when a copyrighted work is incorporated into 49 identical items?
Behind each form of IP are different policies explaining why protection is granted. Patent rights are typically said to reward ingenuity and to foster creativity and research by encouraging inventors to publicly disclose and disseminate their work. As noted in a recent Supreme Court of Canada case (CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339), the purpose of copyright law is the need for a just reward for a creator, while balancing “the public interest in promoting the encouragement and dissemination of works of the art and intellect.” Trademarks are protected so that consumers can distinguish goods and services of one company from those of another. Perhaps an examination of the policies behind each form of IP is the best way to begin a discussion of the overlap and any merits.