Canada’s Intellectual Property Firm

Colourful designs and a streamlined practice get the green light in Canada

Authored byChristine Genge and Lionel Fishman

Today, the Canadian Industrial Design Office announced changes that significantly modernize and streamline six of its office practices, substantially benefitting applicants seeking protection for their designs in Canada.

Colour as a registrable feature of the design

Chief among these changes is that colour will now be registrable as a feature of the design in combination with other design features. Effective January 16, 2017, applicants will be able to claim colour as part of a design by filing colour photographs or drawings and stating in the design’s description that colour is a feature of the design. This change significantly broadens the scope of subject matter available for registration.

Examination of computer-generated animated designs

Another change of significant benefit to applicants is in the manner in which computer-generated animated designs will now be examined. Previously, every state of an animated design was treated as a separate design, often requiring applicants to file multiple divisional applications to protect all the states in an animated design. Under the new practice, the entire animation will be examined as a single design. Drawings of the design will be viewed as a sequence. Thus, the cost associated with obtaining registrations for animated designs should be significantly reduced.

Earlier examination when certified copy of priority application filed

A further highlight of the Industrial Design Office’s announcement is that applicants will be able to obtain earlier examination in the case of designs that have a foreign priority claim. Up to now, the Design Office did not begin searching applications for originality until at least six months after the filing date, irrespective of the priority date being claimed. Effective January 16, 2017, the Office will search for originality as early as six months from the priority date if a certified copy of the priority document is submitted by the applicant. Thus, by filing a certified copy of the priority application, applicants can shorten the time to examination without having to pay any government fees for doing so.

Other Changes

While the changes highlighted above provide the greatest benefits to applicants, the other three changes are still worth noting:

  • The time limit for responding to Examiner’s Reports has been shortened from four months to three months, with the intention of speeding up the prosecution process.
  • A delay of registration will now commence from a more relevant date, namely, the latest of the following dates: the date of allowance of the application, the date a previous delay of registration expires, or the date the request for delay of registration was received.
  • Lastly, for more certainty, the Design Office will now issue a further communication to the applicant where a final rejection by an examiner is not appealed, rather than simply noting the application as abandoned.

Closing Remarks

Overall, the changes that were announced today will align Canadian industrial design practice with other, major jurisdictions and will allow applicants to obtain faster, broader and more cost-effective design protection in Canada.

For further information regarding industrial design, please contact a member of our firm’s Industrial Designs group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.