Canada: Canada's New Industrial Design Regime: Canada Joined The Hague System, And More

Last Updated: November 22 2018
Article by Sean Zhang

Major amendments to Canada's Industrial Design Act (the "Act") came into force on November 5, 2018. The changes are extensive and significant, with many sections of the Act completely replaced by new provisions and several new sections added. Together with the amendments to the Act, the regulations under the Act are completely new and also came into force the same day. A new Industrial Design Office Practice Manual (IDOP) is also released. The changes are part of Canada's efforts to modernize Canada's industrial design regime.

Many of the changes may significantly change how a design application is filed in Canada and prosecuted in Canada's Industrial Design Officei. Some may have a very direct impact to applicants, as will be discussed below.

Canada Joined Hague System. The Hague System is an international registration system for industrial designs, that allows an applicant in one member country to obtain protection of an industrial design in all member countries based on one single international application. Currently, the Hague System has 69 member countries. As a result of Canada joining the Hague System, Canadian businesses now can register industrial designs in all 69 member countries of the Hague System (and any countries that will join the Hague System in the future) by filing only one application. Likewise, it is also now possible for applicants in any of these member countries to designate Canada in their international applications, thus obtaining protection in Canada for the designs, when file through the Hague System.

Longer Protection for Registered Designs. Significantly, the amended Act changed the term of protection to the later of 10 years from registration and 15 years from the date of application. Under the old Act, the term of protection was 10 years from registration. Currently, the time taken from filing an application in Canada to registration is generally less than two years, and often close to one year. Therefore, with this change, the term of protection of a design will be significantly increased, generally by 30% to 40%, depending on the pendency of each application.

More Time to File for Protection in Canada. Canada is one of the countries in the world that provide a one-year grace period to file for registration of a design that is already disclosed publicly. In the past, if a company disclosed its own design publicly, it would have 12 months to file an application in Canada for the already disclosed design. The amended Act changed that to 12 months to file a priority application anywhere in the world, after which the applicant would have an additional 6 months from the priority date to file in Canada. This practically extended the filing deadline by an extra six months. This gives many applicants, in particular foreign applicants, the opportunity to file for protection in Canada, whereas before the amendment, a deadline to file in Canada may have been missed.

New Novelty Standard Codified. Another significant change is the introduction of novelty standard, or a "substantially similar" test. This replaced the old "close resemblance" test and the "originality" requirement. Also significantly, citable prior art now will expand from "design already registered" to any design that has been disclosed "in such a manner that it became available to the public in Canada or elsewhere."  As a result, many known designs that would not be citable prior art now will be. It will remain to be seen how this change may impact the examination of applications in practice, and whether this would significantly increase the pendency of applications.

Mandatory Publication. In the past, design applications were not published until registration of the designs. Rejected applications were not published. This will change. All design applications will be published at 30 months after filing or priority date, or sooner, upon registration. Businesses will need to keep this in mind, in case a design application takes more than 30 months to prosecute with no clear prospects of registration soon.

Changes to Canada's industrial design regime introduced by the amended Act and new Regulations are extensive and significant. In addition to changes discussed above, there are numerous other changes which may also be significant to applicants, such as removal of requirements for a description of design in the application, possibility to mix drawings, photographs, and other "representations" to illustrate the design, allowing domestic priority, handling of applications for related designs, a new divisional application practice, among others. Companies may need to re-examine their intellectual property strategies, both for Canada and abroad, with respect to industrial designs. Foreign companies may also wish to review their current practice with respect to protecting designs in Canada, to take advantages of these changes that specifically are designed to modernize Canada's industrial design regime.

Footnote

i What used to be called "Industrial Design Branch" of the Canadian Intellectual Property Office is now Industrial Design Office. All correspondence related to an application for registering an industrial design must be submitted to the Industrial Design Office, one of the many new nuances under the new regime.

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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