We have lift off: Canada’s new industrial design regime launched – Newsletters

Divisional applications provide more flexibility

An applicant can now file a divisional application for any design that was originally disclosed – not merely claimed – in the parent application as filed. For example, the Canadian Industrial Design Office has indicated that applicants can file a divisional application with portions of the design in solid lines that were shown in dotted lines in the parent application as originally filed and vice versa. Divisional applications also remain available for cases where the design office issues an examiner’s report objecting to an application as containing more than one design.

Term of protection and grace period more favourable to rights owners

Under the amended act, the term of protection begins on the date of registration and ends:

• 10 years from the date of registration of the design; and
• 15 years from the filing date.

In each case, it is subject to the payment of a single renewal fee. Previously the term of protection was limited to 10 years from the date of registration. Moreover, the one-year grace period for prior disclosure now extends from the application’s priority date. As a result, when priority is claimed, any public disclosure by the applicant of the applied-for design in the year preceding the earliest priority date will not be citable against the application.

Rules surrounding content of applications have eased

Applicants can now choose whether to provide a description of the design or statement of limitation. Without a statement of limitation, the application is deemed to relate to all of the features of ‘shape’, ‘configuration’, ‘pattern’ and ‘ornament’ shown in the representation of the design unless an exception applies, such as the use of dotted lines in the drawings to exclude features from the claimed design. Further, a wide range of drawing techniques are now accepted and applications may include line drawings, photographs and computer-aided design models.

Canada now designated in international applications filed under Hague system

The Canadian Industrial Design Office will treat each design included in an international application as a separate, so-called ‘Hague application’, which will be substantively examined. If the design office does not issue a notification of refusal within one year of publication of the international registration, the Hague application will automatically register as an enforceable Hague registration in Canada. If a notification of refusal is issued, the applicant will have an opportunity to respond in the same manner as it would to an examiner’s report issued for a domestically filed application.

Comment

These changes usher in an exciting new era for industrial designs in Canada. They also comprise the first of a host of amendments to Canada’s IP regime. Amendments to both the patent and trademark regimes are scheduled to come into force in 2019 (for further details please see “New draft Trademark and Industrial Design Regulations released”, “Proposed new Industrial Design Regulations mark step towards joining Hague Agreement” and “Date set for implementation of Hague Agreement and modernised industrial design regime”).

For further information on this topic please contact Christine Genge or Lionel Fishman at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.