Industrial Design Act changes: registering multiple designs

Nelligan O'Brien Payne gratefully acknowledges the contribution of Suzanne Dunn, Student-at-Law to this blog post.

Applicants who are preparing to submit their industrial design applications may want to take upcoming changes to the Industrial Design Act and Regulations into consideration, as they will likely be in force in late 2015 or early 2016. The changes may simplify the application process and provide more cost-effective options for registering multiple designs.

In December 2014, Canada saw substantial changes to the Industrial Design Act with the passing of Bill C-43, the Economic Action Plan 2014 Act, No 2. The Act received Royal Assent on February 11, 2014, but the changes to the Industrial Design Act and Regulations have not yet come into force.

The changes under Bill C-43 will bring Canada in line with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Design (“Hague Agreement”), along with over 60 other countries. This will modernize Canada’s industrial design legislation and create international consistency amongst contracting parties’ international applications.

According to the Hague Agreement, when submitting an international application, an applicant can file up to 100 designs in a single application as long as they all belong to the same class under the Locarno System, and designate Canada (and other member countries) on their application. The Locarno System is an international industrial design classification system.

Allowing for the submission of multiple designs will simplify the process for many applicants. The fee structure is based on the number of designs, reproductions and pages included in the application, and an estimate can be quickly calculated online. There is a base fee for the first design submitted, and then a reduced fee for each additional design included with the application. Some countries have an additional individual designation fee.

For example, in the European Union, multiple designs that are quite dissimilar, such as a hammer and screwdriver, can be approved under a single application.

However, the application process under the Hague Agreement does not provide for seamless approval in all countries. Some countries will continue to implement their substantive examination process nationally, which may have unique or country-specific requirements, such as whether partial designs or shaded drawings are allowed or not.

For example, even when designating the United States through the Hague Agreement, the United States Patent and Trademark Office (“USPTO”) would require that an application with multiple designs must be directed at “a single design invention”. Therefore, even if designs are within one Locarno class, the USPTO may issue a requisition to divide.

On the other hand, while Japan’s Design Act requires that only one independent design may be claimed in a single application, the Japan Patent Office (JPO) would not issue a requisition to divide an application even if an international application contains two or more designs. It is to be noted that JPO may treat such international applications (with multiple designs) as if they were two or more applications. Therefore, any procedure before JPO must be taken for each design in the international registration, if applicable.

The Canadian Intellectual Property Office conducts substantive examination like USPTO and JPO. Thus, while applicants will be able to file up to 100 designs under one international application, they may or may not all be approved at once in Canada, depending on the restrictions in the regulations.

The amendments to our Industrial Design Act and Regulations will not come into force until later in 2015 or 2016. Check back into Nelligan O’Brien Payne’s IP blog for future discussions and updates on changes to the Industrial Design Act and Regulations.