Launch of public consultations on amendments to the Industrial Design Regulations
The Government of Canada is moving to modernize Canada’s intellectual property (IP) regime and join five international IP treaties: the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement); the Patent Law Treaty; and for trademarks, the Madrid Protocol, the Singapore Treaty and the Nice Agreement.
Changes to the Industrial Design Act required for accession to the Hague Agreement received Royal Assent on December 16, 2014. The proposed changes to the Industrial Design Regulations (the Regulations) would complete the next step towards accession and further modernize Canada’s domestic industrial design framework.
The proposed Regulations are published in Canada Gazette, Part I, for a 30-day period for public comment between December 9, 2017 and January 8, 2018. We encourage Canadians to share comments and views; your feedback will be considered prior to finalizing the regulations for publication in Canada Gazette, Part II.
Benefits of acceding to the Hague Agreement
Currently, Canadian businesses seeking to register their industrial designs in other jurisdictions must meet the particular administrative requirements for each foreign IP office by filing separate applications, paying separate fees in the appropriate currency and managing their applications and/or registrations in each individual jurisdiction.
Acceding to the Hague Agreement can simplify this process for Canadians by providing them with access to an international registration system—the Hague System—that allows industrial designs to be protected in multiple countries or regions through a single, streamlined process. Key benefits of this process include the following:
- The application can be in one language (English, French or Spanish);
- You may file directly with the World Intellectual Property Office (WIPO) through the E-filing interface, or on paper;
- The application can contain up to 100 designs if they belong to the same class of the International Classification;
- Fees may be paid in one transaction, in one currency (CHF); and,
- Management of an international registration is simplified—for example, a change in name or address of the holder, or a change in ownership, can be recorded in one step.
Most of Canada’s major trading partners, such as the European Union, the United States, Japan and South Korea are part of the Hague Agreement.
Canada’s membership in the Hague Agreement would also provide foreign businesses in member countries reciprocal advantages in applying for industrial design registration in Canada.
Modernizing the industrial design framework
In addition to the measures required to accede to the Hague Agreement, the proposed Regulations contain provisions that would update, clarify and codify aspects of Canada’s industrial design framework. For example, provisions are being introduced that would expand CIPO’s ability to interact with clients electronically and reduce red tape for businesses.
The following is an overview of some key regulatory changes being proposed. A more detailed description of the amendments is provided in the Regulatory Impact Analysis Statement (RIAS).
Overview of key proposed regulatory amendments — Industrial Design Regulations
The proposed amendments would facilitate and enhance our electronic commerce capabilities by allowing CIPO to communicate with clients via a web interface and by accepting additional electronic file formats. In addition, the requirement that correspondence be restricted to one application or registered design would be removed.
Representation before CIPO
A representative for service would no longer be required and there would be no requirement that an appointed agent have a Canadian address.
The proposed amendments would define what information is contained in the Register of Industrial Designs.
Application requirements would be updated to align with international standards, e.g. the current requirement for applicants to complete a prescribed form would be removed and a description of the design would no longer be mandatory.
One design per application
This section would extend the ability to file divisional applications to content that is disclosed in the original application. While CIPO currently allows divisional applications in practice, the proposed amendments would clarify and codify processes.
Requirements for a filing date would be simplified: an applicant would only need to provide an indication that the registration of a design is requested, a name, a means of contact and a representation of the design.
This section would stipulate that if CIPO decides the design is not registrable, CIPO must first send a report to the applicant outlining its concerns and objections. Applicants would have three months to reply to this report and be able to request one six-month extension.
The proposed regulatory amendments would introduce limits to what an applicant can amend. For example, an amendment that changes the identity of the applicant would not be acceptable and neither would an amendment that changes the design to one that is substantially different from the original.
The proposed amendments would provide more detail on priority request procedures, e.g. they introduce a consequence for applicants requesting priority if they do not comply with a request from CIPO to provide a copy of their priority documentation.
Among other changes, this section also includes a new provision allowing CIPO to access a digital database in order to obtain a copy of priority documentation.
Applications and documents made available to public
Any national application that is pending would be published after 30 months from its filing date or priority date, unless it has been withdrawn. Applications received under the Hague System would be published by WIPO according to established timelines.
Maintenance of exclusive right
The proposed amendments contain provisions for maintaining a registration. While the process for paying fees remains largely the same as current practice, instead of being renewed for five years, a renewed registration will cover a period that begins five years after the date of registration of the design and ends on the later of the end of 10 years after the date of registration and the end of 15 years after the filing date of the application.
While the proposed amendments would not change the current fees charged by CIPO, this section clarifies that CIPO would, upon request, refund payments made in excess of the amount required. Applicants would have three years from the date of overpayment to request a refund.
Implementation of the Hague Agreement
Examples of amendments required for the Hague System to come into effect in Canada include provisions:
- To permit designs published on the International Register, and a copy of the International Register, to serve as evidence in court. As it stands, only designs registered in the Canadian Register of Industrial Designs can do so; and
- To ensure that applicants using the Hague System can secure a filing date even though they have not filed directly with CIPO.
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