On January 16, 2017, the Canadian Intellectual Property Office (CIPO) announced changes to practice under Canada's Industrial Design Act.1 These changes (posted here) are set out in six separate Practice Notice2 covering:
- Delaying Registration
- Hastening Searches
- Shorter Response Time Limits
- Appeal Procedure
- Animated Designs
- Colour
1. Delaying Registration
The most important changes pertain to requests for delay. Failure to file a timely pre-paid, pre-emptive request for delay may risk the loss of the right to file one or more divisional applications.
There is no "Notice of Allowance" in Canadian Designs practice. Up to now there has been an automatic grace period of two months following any response to an office action to permit divisional applications or a request for delay to be filed. Delay could also permit filing in other countries before registration in Canada. Previously, a delay of six months was granted on request (and submission of a $100 fee.3
This Practice Notice eliminates the previous, automatic, two-month delay. Now, absent a request for delay, a design will register the day after allowance. Alternatively, on request prior to allowance, registration will be delayed up to six months, from the latest of (a) allowance; (b) expiry of any previous delay; and (c) the request date.
Where there has been a requirement for restriction, to prevent registration without notice, the response should either be accompanied immediately by one or more divisional applications, or by a pre-paid pre-emptive request for post-allowance delay. At allowance, the Office will indicate the date of allowance and the earliest possible registration date. Divisional applications must be filed before expiry of the delay. In effect, the Applicant can pre-pay for the equivalent of a Notice of Allowance.
Applicants customarily request that divisional or co-pending applications be examined and registered together to preventing the designs from being citable against each other.4 The Practice Notice does not appear to be inconsistent with this existing practice. However it is not clear whether a separate delay must be requested for each successive divisional application. That is, existing practice accommodates the serial filing of divisionals. The new practice may tend to prod Applicants to file divisional applications in parallel instead.
While the Act and the Industrial Design Regulations5 are not without need of renewal, it is not clear this change reflected known dissatisfaction or an unmet need. The Office posits "This change provides clarity to applicants as to when the requested delay of registration starts, and also allows them to benefit from an optimal delay period". This change appears to encourage shorter pendency, and perhaps fewer divisional applications.
2. Hastening Searches
Currently, the Office waits at least six months from the Canadian filing date before searching prior art, to comply with the Paris Convention. At present, certified copies of priority applications are only submitted in the extremely rare instances where novelty is critical to examination. Under this Practice Notice, if an application claiming foreign priority additionally submits a certified copy of the foreign priority application, the Office will search as early as six months from the priority date. This may hasten prosecution.
3. Shorter Response Time Limits
New office actions will have a three month reply period, rather than a four month period as before. This may tend to shorten pendency.
4. Appeal Procedure: "Notice of Possible Refusal"
Rarely, an Applicant and the Office reach an impasse as to whether an application is registrable. Previously, the Office would issue a "Final Report" upholding its objections. Applicants were able to appeal to CIPO's Patent Appeal Board (PAB). Henceforth the Office will issue a "Notification of Possible Refusal." Applicants will have three months to request PAB review. Failing response, the application will be considered for refusal and the decision will be communicated to the Applicant.
5. Animated Designs
Currently "electronic icons embodied in a finished article" are considered acceptable Industrial Design subject matter. The title of an electronic icon "must identify the finished article in which the icon is embodied, e.g., "computer monitor," or "washing machine."6 Previously, each moving frame was examined as a different design.
To reflect contemporary changes, "applications for computer-generated animated designs are to be examined as a single design applied to a finished article." Animated designs should include a sequence of drawing frames. If there is no description of the sequence, the order in which the figures appear will be assumed to define the sequence of the design. This is a welcome advance.
6. Colour
Under the Act, "design or industrial design means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye".7
Previously, the Office was of the view that "Industrial design does NOT apply to ... the colour of an article".8 One way to address the prohibition was to identify regions as "visually contrasting".
As with animated designs, seeking to be au courant, the Notice indicates "colour may form part of a combination of features that constitute a design as defined in section 2 of the Industrial Design Act. Colour by itself is not considered to fall within the definition of a design." Applicants must state colour is a part of the design.
"Drawings or photographs filed in respect of an application for registration of a design that include colour as a feature, must be filed in paper form and in colour." Interestingly, the Notice also indicates "due to current technical limitations, the Office is unable to accept colour drawings or photographs in electronic form". Consequently, "the office may display a black-and-white version on its database, and annex a black-and-white version to the certificate of registration."
While this is a step forward, it is unclear whether including a specific colour would provide broader protection than "visually contrasting". It is also unclear how this change is consistent with the Regulations, which require all documents to be "presented so as to permit direct reproduction in black and white."9 A Court may question this.
If the registration is to be in black-and-white in any event, public notice of colour seems problematic. The Office has not suggested a cross-hatching colour key such as used in the United States Patent and Trademark Office, such that colour information might be retained in black-and-white.
Footnotes
1 R.S.C., 1985, c. I-9 [Act].
2 A Practice Notice expresses CIPO internal policy. It is not a change in law. Although Practice Notices have no force in law, they will be followed largely as if they do. The Industrial Design Office Practices – a document prepared by CIPO "to provide guidance on current industrial design practice" – has not changed. Where Practice Notices are inconsistent with guidance set out in the Industrial Design Office Practices, the Practice Notices will be followed.
3 Industrial Design Office Practices, s. 11.
4 In Canada a design becomes prior art as of its date of registration – even in respect of its own divisionals. Further information on this uniquely Canadian pitfall can be found here.
5 SOR/99-460 [Regulations].
6 Industrial Design Office Practices, s. 6.4.4.
7 Act, supra note 1 at s. 2.
8 See e.g. Industrial Design Office Practices, s. 6.1.
9 Regulations, supra note 6 at s. 12(1).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
