Nelligan O’Brien Payne gratefully acknowledges Adam Soliman, Student-at-Law for writing this blog post.
Amendments to Canada’s Industrial Design Act came into force on November 5, 2018.
The amended Act and new regulations were developed with the Canadian Industrial Design Office (CIDO) in close collaboration with stakeholders, and have been revised to modernize Canada’s industrial design practice. The amendments align Canada’s industrial design regime with its major trading partners, including joining the Hague Agreement Concerning the International Deposit of Industrial Designs (the “Hague Agreement”).
Major changes include:
- Accession to the Hague Agreement and Locarno Classification system;
- Modernizing and streamlining 24/7/365 online filing / e-submission to CIDO;
- The term of the protection has been increased from 10 years to 15 years from the registration;
- Simplified requirements for mandatory contents of a design application;
- Clearer registrability criteria for registration of an industrial design;
- Applicants are no longer required to have a representative for service in Canada; and
- The one-year grace period for prior disclosure of the design will be calculated from the date of priority date, instead of Canadian filing date.
Canada’s accession to the Hague Agreement
A single international application can now be used to register an industrial design in multiple member countries, including Canada.
This encourages foreign rights holders to apply for protection in Canada, and makes it easier for Canadian rights holders to secure protection internationally. The filing requirements for Hague applications are prescribed by WIPO, not Canadian law, and allow applicants to secure protection in over 60 countries.
An international application is filed at WIPO’s International Bureau (IB), which checks for formalities. The IB will then publish the design six months after registration, unless requested otherwise. Once the design has been published, each selected country can initiate substantive examination and grant or refuse protection.
Canada has also adopted the international classification established under the Locarno Agreement. All designs included in a single international application must belong to the same class of Locarno Classification.
24/7/365 online filing
The amendments to the Act modernize and streamline the application and registration process for a design.
New provisions enable electronic communications with CIDO. Online applications will be deemed received by CIDO on the actual date of communication, regardless of whether the Office is closed on that day. If you consent to receiving electronic communications from CIPO, you will only receive communications through the specific electronic means of your choice.
Term of protection
Rights holders now have an exclusive right in Canada up to a maximum of 15 years from the filing date. The term of protection for a Hague application begins on the date of national registration, and ends on the later of:
- Ten years after the date of national registration; and
- Fifteen years after the filing date of the Hague application, unless the expiry date of the international registration is earlier.
The amendments simplify the process of applying for protection of an industrial design. Use of a prescribed form is no longer required. A description is also no longer required. CIDO will no longer issue a certificate of registration. Instead, applicants will receive a notification when the design is registered. Should a due date fall on a weekend or holiday, it is automatically extended to the next day on which the Office is open for business.
Criteria for registration
Applications are now deemed to relate to all features of a design, unless otherwise specified in a statement of limitation.
Statements of limitation can be used to limit some features of a design from applying. The statement must clearly describe which features are claimed and must not create alternatives that may lead to ambiguity as to the scope of the design. Designs may be shown in isolation. Electronic icons and computer-generated animated designs – like icons on your phone or laptop – are now registrable. International applicants are no longer required to have a representative for service in Canada.
Confusing novelty requirements have been replaced with novelty requirements similar to those found in Canada’s patent system, which provide certainty on relevant prior art.
New amendments to the Regulations give applicants a one-year grace period for prior disclosure of a design. An application filed earlier is not prior art to a subsequent application for a similar design filed by the same applicant – within 12 months of the priority date earlier application.
Applicants will no longer be able to delay responding to a CIDO action for a full calendar year. The time permitted to respond to an Office action is three months, and the number of extensions available to provide a response to CIDO has been reduced from two six-month extensions to one six-month extension.
Applicants can now also file voluntary divisional applications even when no lack of unity objection has been raised, to pursue designs and/or design features not originally claimed. However, the divisional application must be filed within two years of the filing date of the original parent application, which must not have been subject to restriction.
Canada’s modernized industrial design regime makes it easier to protect Canadian industrial designs in other countries.
The streamlined process encourages international rights holders to apply for protection in Canada and provides greater certainty for applicants throughout the process.
Accession to the Hague Agreement will give Canadian rights holders the ability to apply for protection in over 60 countries at once.
If you would like to know more, do not hesitate to reach out to our Intellectual Property Group.