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Changes to Canada’s Industrial Design Regime: What You Need to Know

Authored byMeika Ellis

In a pursuit to accede to the Hague Agreement Concerning the International Deposit of Industrial Designs (the “Hague System”) and modernise Canada’s industrial design regime, Canada amended its Industrial Design Regulations, released June 27, 2018. The amendments will come into force at the same time as the amended Industrial Design Act, November 5, 2018. Once in force, these amendments will allow applicants from Hague-member countries to register up to 100 industrial designs in multiple countries through one application.

While designed to comply with the Hague System, the amendments benefit applicants by creating more efficient procedural options and providing clarity regarding the overall process.

Increased Efficiency

Amendments will work in an applicant’s favour by increasing efficiency in:

  • Communications: Many businesses own large industrial design portfolios and are burdened with having to produce correspondence–now “communications”–for each individual application. Under the new Regulations, there need only be one communication sent with regard to all applications where there is a common issue. Further, under section 6, applicants can now consent to receiving electronic communications only.
  • Point of Contact: Under subsection 12(4), an applicant or authorised third party may now communicate with CIPO regarding an application, not just an appointed agent. This amendment allows for foreign applicants to communicate directly with CIPO without being required to appoint a Canadian agent.
  • Registration: The process for registering a design has become more substantive. The requirement to fill out a prescribed form is removed with applicants having the freedom to submit their application as they see best as long as they adhere to the general requirements listed in section 13.
  • Filing Date: To secure a filing date quickly, the information required to obtain the file date is simplified under subsection 21(2) to: an indication that registration for a design is requested, name, a means of contact, and a representation of the design.

Clarity on Process

Other amendments will affect how an application is processed by providing clarity on:

  • Divisional Applications: Subsections 20(2)-20(6) codify divisional applications and stipulate that where a design is a divisional, the application must indicate either within the application or a separate document that such design is a divisional. While divisional applications will be treated in the same manner as a regular application, it cannot claim supplemental subject matter absent from the original application. Divisional applications can now, however, extend to anything that was disclosed in an original application.
  • Extensions: Section 22 aims to provide legal certainty in the marketplace by requiring applicants who desire a six month extension over the provided three months to respond to an Examiner’s Report to request it. The extension is no longer automatic and there is no possibility to extend beyond the single six months.
  • Priority: Section 27(6) adds a consequence to when applicants fail to file proper documents when seeking priority on the basis of a previously filed application: where applicants fail to the supply the required documents, the request for priority will be deemed withdrawn.
  • Self-collision: Under section 31, a subsequent design will no longer be blocked if it overlaps with an earlier design if it is filed within 12 months of the initial design.

A final noteworthy change is the change in the potential number of years for which an industrial design registration can provide an exclusive right to an owner. Under section 31, applicants who renew their design can receive a period of protection ending on the later of 10 years after the date or registration and 15 years from the filing date of the application.