Canada: Canada Adopts Six New Industrial Design Practices To Improve Service And Align With International Norms

The Canadian Intellectual Property Office (CIPO) released six new practice changes in relation to industrial designs on January 16, 2017. These practices are effective immediately and are being implemented, at least in part, to improve service and adopt practices or provide benefits available from other jurisdictions. 

As documented in a number of our previous IP Report articles, CIPO is adopting significant changes to its trademark, patent and industrial design regimes to meet its international obligations as well as adopting significant changes on a unilateral basis. The full effect of these new laws, regulations and practice changes will not be seen until at least 2018. For at least some of the changes that do not require the coming into force of the applicable new legislation, CIPO is announcing early practice changes as and when it has implemented the associated procedures/infrastructure and personnel training.

A summary is set out below of the six new practices relating to animated computer-generated designs, colour as a design feature, office action response time limits, early searching, examination refusal notices and delaying registration.  While the changes take immediate effect and may be applied to existing and new applications, practical details in respect of the effect on existing applications are not immediately known. For example, if a pending application claimed color as a feature at the time of filing but was amended to remove this feature, will CIPO permit a further amendment to claim color again or will a divisional application be required?

Animated Computer-Generated Designs – This subject matter relates to the visual changes to one or more elements on a display screen over time (e.g., visual effects of a graphical user interface (GUI)) and has been protectible in many other jurisdictions around the world. The visual changes are generally illustrated by a sequence of frames showing the display screen from different points of time rather than different points of view. Two or more figures may illustrate very different design elements. Under this practice change, the figures of an animated design are examined together as a single design. In contrast, for unanimated computer-generated designs, figures showing different design elements are permissible in a single application/registration only if they show variants of the same design. 

While the practice is similar to U.S. practice, there does not appear to be a requirement in Canada to either indicate positively that the design sought to be protected is animated or state that protection is not sought for the process or period in which one image transitions to another, as per MPEP 1504.01(a)(IV). Practically, it may be advantageous to include a statement in the description or title indicating that the design is animated to preclude an examination report to resolve the ambiguity.

Colour – Colour is now recognized by CIPO as a design feature when it is claimed in combination with at least one other design feature.  Colour by itself is not considered to fall within the definition of a design. Other features are shape, pattern, configuration and ornamentation. It would seem that a combination of ornamentation and color defines the broadest scope among the feature combinations and care will be necessary in properly illustrating the design as applied to the article.

Colour drawings or photographs may be filed but must be filed in paper form only and not electronically until further notice.

Time Limits to Respond to an Office Action – The time limit is shortened to three months (from four months), unless otherwise specified. This time limit is relatively short, particularly when an office action is reported to instructing counsel and then to the applicant. However, CIPO's extension practice for industrial designs remains the same: a single six month extension is available (without government fee) upon request filed by the initial response deadline. Further requests will require substantive reasons.  CIPO is driven to issue registrations more quickly and reduce average pendency. It will be interesting to see if extension requests increase sufficiently such that any time gained by the shortened response deadline is lost when computing the average.

Early Search with Priority Claim – CIPO will now advance an application to search for originality as early as six months from the priority date if a certified priority document is voluntarily filed and the document supports the priority claim. Without a voluntary filing of the certified copy, CIPO will continue its prior practice of waiting six months from the Canadian filing date to search an application regardless of whether an applicant did or did not claim priority.  This practice change is expected to hasten registration but may not be required for all applications. There is no official fee payable to CIPO for it to receive and review a certified copy of a priority application but there are usually costs to obtain and file one.

Notice of Possible Refusal – This notice replaces CIPO's Final Report practice and addresses a technical procedural requirement to abandon applications. A Notice of Possible Refusal provides the applicant with a three month deadline to request a review by the Patent Appeal Board. Failing to request a review will result in the Minister considering the application for refusal and forwarding the decision to the applicant.

Delaying Registration – Applicants may request a delay in registering a design that is otherwise in an allowable state. The new practice improves the prior practice in that registration may be delayed up to six months as counted from the later of the date the application is in an allowable state or the expiry of any previous request. Previously the delay period of up to six months was measured from the date of filing the request. As CIPO registers a design without notice to the applicant, applicants were required to file a request to delay early in the application procedure and pay for time that was unnecessary while CIPO processed the application.  While it remains necessary to file the request early, CIPO is providing more value for the fees paid.

Unfortunately, CIPO's prior practice of holding an application that was ready for registration for two months without cost to permit an applicant to determine whether or not to file a divisional application is discontinued.  It will now be prudent to request a delay of registration and pay the appropriate government fee (currently $100) at the time of filing a response to an office action restricting an application to a single design if more time is needed to make a decision to file a divisional application. Alternatively, a time extension to delay filing a response to the office action may be sought for no government fee.

Conclusion

The above practice changes are geared to providing applicants with more design options consistent with international norms (registering animation and color), advancing applications to registration sooner (priority search, shorter response time limits, no automatic delay for divisional decisions) and improving service (delayed registration). Even though response deadlines are being shortened, this change is not likely to have a negative impact on the majority of applications. CIPO is continuing its efforts to provide better and more client-oriented services and the expected benefits from many of these changes are clear.

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.

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