Canadian Industrial Designs Office Makes Changes to Better Protect Applicants

On January 16, 2017, the Canadian Industrial Design Office issued six new notices on changes to modernize Office practice on subject matter and streamline examinations. The changes will provide significant advantages to applicants seeking protection of their industrial designs in Canada. Key aspects of these notices are highlighted below and include changes to what can be protected using an industrial design and to examination procedures.

What You Need To Know

  • Colour can now be protected as part of a design.
  • Computer-generated animated designs, as a sequence of frames, will now be examined as a single design.
  • Searches to assess the originality of the industrial design application during examination may be conducted six months from the priority date, rather than six months from the filing date.
  • The standard time period to respond to office actions has been shortened from four to three months.
  • The Design Office will replace "Final Report" practice with a "Notification of Possible Refusal" practice.
  • If requested, a six month delay in the registration of a design will now begin on the latest of: (1) the date of allowance, (2) the date a previous delay of registration expires, or (3) the date the request was received by the Design Office. The Design Office will no longer hold back registration of the parent design for two months to provide time to file a divisional application.

Colour Now a Registrable Design Feature in an Industrial Design

Applicants can now claim the colour(s) of a design as part of a combination of features that constitute the design. However, colour on its own (i.e., not as embodied in a feature of the design) cannot be protected by an industrial design. To protect colour as part of the design, the application must include drawings or photographs of the design in colour in paper form. The description must specify that colour forms part of the design.

Computer-Generated Animated Designs Examined as a Single Design

Applicants can now obtain industrial design protection for a computer-generated animated design in a single registration. Drawings submitted in the application will now be considered as a sequence of frames of the animated design. Unless otherwise specified, the order in which the drawings appear will define the sequence. For pending applications, re-examination may be available on this basis. These changes will substantially decrease costs for covering animated designs with registrations. Previously, every state of an animated design was considered a separate design, often requiring applicants to file multiple applications to fully protect their animation.

Examination Conducted Earlier When There is a Priority Claim

Applicants can now take advantage of a priority claim to speed up examination of a Canadian industrial design application. If an applicant voluntarily submits a certified copy of the priority document that is the basis of the priority claim, instead of waiting at least six months from the filing date of the application to begin a prior art search to assess originality, the Design Office will now conduct the search as early as six months from the priority date.

Reduced Time Limit to Respond to Office Actions

In an effort to reduce the time to registration, the Design Office has reduced the standard time period to respond to an Office action from four months to three months, unless another time limit has been specified. For Office actions issued before the publication date of the notice, the response time limit specified in the Office action still applies. Practices regarding extensions of time remain the same, with applicants able to request a six-month extension of time (no government fee is charged), provided the request is made by the initial deadline for submitting the response.

"Notification of Possible Refusal" Replaces the "Final Report"

The Design Office will now issue a "Notification of Possible Refusal" instead of a "Final Report" when maintaining objections to registration. The applicant will then have three months to request that the file be reviewed by the Patent Appeal Board. If a response to the notification is not received within this time period, the application will be considered for refusal and the decision will be communicated to the applicant.

Delaying Registration

The Design Office has clarified the commencement date of a delay of registration request. Once the prescribed fee has been received, a request for delayed registration will now commence on the latest of: (1) the date of allowance of the application; (2) the date a previous delay of registration expires; or (3) the date the request was received by the Design Office. Registration will be delayed for up to six months. The Design Office recommends submitting the request with the prescribed fee when the application is filed to help ensure that the request is processed before the design is registered. Notably, the Design Office has now discontinued its practice of holding back registration of an allowable application for two months to provide the applicant time to file divisional applications.

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

© 2017 by Torys LLP.
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