Backgrounder: Canada’s New Industrial Design Regulations

Backgrounder

The new Industrial Design Regulations (the Regulations), were drafted to facilitate Canada's accession to the Hague Agreement and to carry out the amendments that were made to the Industrial Design Act. In addition, the new Regulations also modernize Canada's industrial design regime by updating, codifying and improving aspects of the regulatory framework.

The Regulations were developed in close collaboration with stakeholders, including initial consultations on the drafting instructions in 2016, public web-based consultations on an early draft of the Regulations in the summer of 2017, and public consultation through the Canada Gazette, Part I, between December 2017 and January 2018.

Changes following publication in the Canada Gazette, Part I

The following substantive changes were made to the Regulations after the consultation period:

  • Section 6, Electronic Communications, was clarified to convey that if an applicant consents to receiving electronic communications, they will only receive communications through the specific electronic means they choose.
  • In Section 12, Representation Before the Office, an exception was added to provide an applicant or any party authorized by them, flexibility to give notice of the appointment or revocation of an agent, even when an agent has been appointed on the file.
  • Section 27 (6), Non-compliance with request (under Priority) was amended to clarify that the Industrial Design Office will remove the applicant's priority request in cases where, when requested by the Industrial Design Office, the applicant does not provide a copy of their priority document before the deadline. In this case, the priority claim will, in effect, be withdrawn from a file as of a specific date.

The Canadian Intellectual Property Office would like to thank everyone who participated in the consultations and contributed to finalizing these Regulations.

The following provides a technical summary of the changes to the Regulations:

Section 1 - Interpretation

Objective

This section was drafted to define all relevant terminology necessary to carry into effect the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement).

Summary of the changes

Definitions have been added for Hague terms, e.g., "Common Regulations", "date of registration", "Hague Agreement" and for national terms, e.g., "divisional application", "the Office". The following definitions were removed as they were found to be no longer relevant: "applicant", "agent", "registered proprietor" and "representative for service".

Part 1 - Rules of General Application

This part contains provisions that apply to both national and Hague applications, unless otherwise specified.

Sections 2 to 11 - Communications

Objective

These provisions provide applicants and the Industrial Design Office with more flexibility in the manner of communication and reduce the burden on clients (such as applicants or agents).

Summary of the changes

New provisions will enable electronic communications. These communications will be deemed to have been received on their actual date of receipt, whether CIPO is open to the public or not. If applicants consent to receiving electronic communications, they will only receive communications through the specific electronic means they choose.

Going forward, documents, information and fees must be addressed to the "Industrial Design Office". Previously, all correspondence had to relate to only one application or one registered design, with few exceptions. Moving forward, the new Regulations removed this restriction.

The Communications sections also provide new detail on acceptable means of communications, the receipt of documents and designated establishments. The provisions outline the manner of presenting documents and provide the Minister or Commissioner with authority to accept a different form of documents. Consequently, reference to the Canadian Patent Office Record has been removed.

Similar to the previous Regulations, communications made with the intent of protesting the registration of a design will be acknowledged and no information will be given as to the action taken. However, the new Regulations contain a new provision indicating that these communications will be made available to the public once the application is made available to the public.

Section 12 - Representation Before CIPO

Objective

This section provides greater flexibility for appointing an agent and clarifies what action can be undertaken by the applicant or an authorized third party independently of that agent.

Summary of the changes

These provisions would allow for the appointment of an agent provided that the Industrial Design Office receives a notice of appointment with the postal address of the agent. There is no requirement that an appointed agent have a Canadian address. The previous requirement to have a representative for service, in the case of foreign applicants, has been removed.

If an agent is appointed, that agent must represent the applicant. As an exception to this provision, a person may act on their own behalf or be represented by any person authorized by them, even if they appointed an agent, for the purpose of: filing an application, paying a fee, requesting a late maintenance or requesting a transfer and providing evidence of such transfer if required. Following publication in the Canada Gazette, Part I, an additional exception was added for giving notice of the appointment or revocation of an agent on the file. The applicant or an authorized third party may revoke an agent, or the agent may revoke him/herself by sending the Industrial Design Office a notice to that effect.

Section 13 - Register

Objective

This section clarifies the content of the Register of Industrial Designs (the Register).

Summary of the changes

The content of the Register was undefined in the previous Regulations. This section was introduced to specify the Register's contents (e.g., registration date, name and address of the registered proprietor, particulars of any transfers, etc.). For a complete list, please refer to the Regulations.

The Industrial Design Office will no longer issue a certificate of registration. Instead, applicants will receive a notification when their design is registered. While the Regulations do not specify the contents of the registration documents, the Industrial Design Office intends to send out a Notice of Industrial Design Registration, a Registration Details Report, the representation of the design and maintenance information.

Sections 14 to 20 - Applications

Objective

This section aligns application requirements with international standards, including those of the Hague System. The new Regulations provide more flexibility for applicants in drafting their application.

Summary of the changes

  • Use of a prescribed form is no longer required;
  • A description is no longer required; instead, the application is deemed to relate to all features of a design, unless otherwise specified in a statement of limitation; and,
  • Designs may be shown in isolation.

A number of new application requirements have been introduced, such as:

  • The name and postal address of the applicant (previously, this was a filing date requirement); and,
  • The representation of a design must, taking into account the name of the finished article, fully disclose the design and permit its features to be identified clearly and accurately.

Divisional applications

This section also contains provisions for divisional applications. The previous Regulations indicated that an application must relate to only one design or to variants. While this is still the case, the ability to file divisional applications has been extended to content that was not only applied for in the original application, but for anything that was disclosed (e.g., other designs that are contained within a larger environmental view) in that application on its filing date. Applicants will have up to two years to file a divisional application for anything that was disclosed to the Industrial Design Office through an original application, except if an application has to be divided following a request from the Industrial Design Office. In that case, the new Regulations provide an exception where an original application may be divided even though the two-year period has ended.

A divisional application will continue to be considered a separate application with respect to the payment of any fees.

Section 21 - Filing Date

Objective

Filing date requirements have been simplified and aligned with international standards, including those of the Hague System. This will allow applicants to quickly secure a filing date and proceed to the next step in the process.

Summary of the changes

A description and a title are no longer required to secure a filing date. The filing date of an application other than a divisional application or a Hague application is the day CIPO receives all of the following:

  • An indication that the registration of a design is sought;
  • Identity of and contact information for the applicant; and,
  • A representation of a design.

If the application does not contain all the required information, the Industrial Design Office will try to notify the applicant (i.e., if identity and contact information have been provided); they will have two months to submit the missing information. Previously applicants had three months to submit the missing information.

Divisional applications inherit the filing date of the original application from which the divisional derives. An addition was made for Hague applications, whose filing date is the date of registration of the corresponding international registration.

Sections 22 to 24 - Examination

Objective

This new section codifies certain Office actions throughout the examination of a file, whether it is a national or Hague application. It also carries forward provisions contained in the Industrial Design Act.

Summary of the changes

The new Industrial Design Act specifies that the Minister must examine, in accordance with the Regulations, each application and determine if the design is registrable. The new Regulations stipulate that, if the design is not registrable, the Industrial Design Office will send a report outlining its objections. Applicants will have three months to reply to the report. Currently, an applicant may request a six-month extension of time to respond to this report — with a possible subsequent extension of another six months depending on the circumstances. Under the new Regulations, only one extension of six months, per report, can be requested. If the Industrial Design Office does not receive a response, the application will be abandoned. An abandoned application may be reinstated within six months of the abandonment by replying to the outstanding report and paying the appropriate fee.

The same registrability criteria will apply to a Hague application. If the design is not registrable, the Industrial Design Office will send a report outlining its objections to the International Bureau of the World Intellectual Property Organization (WIPO) in the form of a "notification of refusal". The International Bureau will then send a copy of the notification of refusal to the applicant. Any reply, or subsequent amendment to the application, or other communication on the file will occur directly between the applicant and the Industrial Design Office.

The new Regulations codify an existing practice by introducing a new provision on advanced examination. On payment of a fee, applicants may request advanced examination of a file; this has the effect of moving the application out of the routine "first-in, first-out" order.

The new Regulations also codify the process for requesting a delay in the registration of a design. A request for delay of registration can be made at any time before registration, provided that the Industrial Design Office has enough time to implement the delay. This is similar to existing practice, but introduces a limit to the delay of registration, which can only be delayed until the day that is 30 months after the filing date of the application or, if a request for priority was made, 30 months after the earliest filing date of the previously regularly filed application on which the request for priority is based. On request and payment of the fee, the Industrial Design Office will, if technically feasible, delay the registration until the end of that time period. A delay of registration cannot be requested for a design that is the subject of a Hague application.

Section 25 - Amendments

Objective

This section clarifies ambiguities regarding how and when amendments may be submitted to the Industrial Design Office.

Summary of changes

The current practice of allowing an application to be amended before the design is registered will continue, with some limitations. Under the new Regulations, an application generally must not be amended to:

  • Change the identity of the applicant;
  • Add a representation of a design (e.g. a new design or a new variant);
  • Substantially change the design or the statement as originally filed; or,
  • Indicate that the application is a divisional application if three months have passed since the date on which the divisional was received.

In addition, an application must not be amended if it has been made available to the public and the amendment changes the name of the finished article to the name of a substantially different finished article.

Sections 26 to 30 - Priority

Objective

This section clarifies and codifies procedures for priority requests for national applications. Requirements for priority requests for Hague applications are outlined in Section 45 (Priority).

Summary of the changes

A request for priority must be made in the application or in a separate document. Requirements include the filing date and the name of the country or office of filing. While not mandatory, the Industrial Design Office suggests applicants also include the number of the previous regularly filed application(s).

A priority request must be made no later than the earlier of six months after the earliest filing date in that priority request and the date of registration of the application. A new provision was introduced stipulating that a request for priority may be withdrawn before the design is registered. If it is withdrawn more than two months before the date on which the application is to be made public, the publication date will be recalculated without taking into account that priority request.

New requirements for correcting errors in a priority claim, providing certified copies and translations of priority documents are also outlined in these sections. An important change is the addition of a consequence for applicants requesting priority if they do not comply with a request from the Industrial Design Office to provide or make available a copy of their priority documentation. The draft Regulations that were published in the Canada Gazette, Part I, proposed that the request for priority would be deemed not to have been made. After publication in the Canada Gazette, Part I, this provision was clarified to specify that, in these cases, the request for priority will be deemed to have been withdrawn instead. This means that the Industrial Design Office will remove the applicant's priority request in cases of non-compliance and that the priority claim will, in effect, be withdrawn from a file as of a specific date.

Section 31 - Novel Design

Objective

This section is new and provides additional certainty for applicants on relevant prior art.

Summary of the changes

Currently, when the same applicant submits similar designs on different dates, the registration of the earlier filed design will block registration of the later filed design for lack of novelty. The new Regulations contain a provision indicating that if the filing date of the later filed application is no later than 12 months after the filing date of the earlier filed application, the design in the earlier filed application will not be considered in the prior art. This will allow applicants to seek protection on similar designs if they are filed within 12 months of one another.

Section 32 - Application and Documents Made Available to the Public

Objective

This section identifies the prescribed date for making an application available to the public and clarifies the effect of a withdrawal of a request for priority on the prescribed date.

Summary of the changes

Currently, an application is only made available to the public once the design is registered. Under the new Regulations, a national application will be made available to the public on the earlier of registration of the design or 30 months from the earliest priority date or, if there is no priority claim, 30 months from the Canadian filing date. The 30-month outer limit is established in the Industrial Design Act.

In the unlikely case where prosecution takes more than 30 months, an application would be made available to the public prior to registration of the design. Applicants wishing to ensure that registration of their designs occurs before their application is made available to the public are encouraged to respond promptly to any office actions. Note that if a document provided to the Industrial Design Office relates to more than one application or registration, the document will be made available to the public at the earliest date that an application or registration to which that document relates is made available to the public.

Hague applications will be made available to the public when they are published in the International Designs Bulletin, which is the official publication of the Hague System and is managed by the International Bureau.

If a request for priority is withdrawn at least two months before the scheduled date for making the application available to the public, that date will be recalculated without taking into account the withdrawn priority request.

If an application is withdrawn at least two months before the date on which it must be made available to the public, the application and any related documents will not be made available to the public.

Section 33 - Maintenance of Exclusive Right

Objective

This section provides additional clarity for applicants and specifies the period of exclusive right for which maintenance fees must be paid.

Summary of the changes

The current Regulations stipulate that, before five years from the registration date, the proprietor of a design must pay a maintenance fee in order to extend the duration of the exclusive right for another five years. The new Regulations maintain this process; however, instead of being renewed for five years, a renewed registration will cover a period that begins five years after the date of registration 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 (the maximum term of protection was extended from 10 years to 15 years in the new Industrial Design Act).

The current Regulations provide a six-month grace period if an applicant misses the deadline to pay the maintenance fee. The new Regulations will maintain the current late maintenance process, with the six-month grace period after the five-year deadline, and the applicable late fee.

The procedure for maintaining international registrations will be administered by WIPO.

Sections 34 and 35 - Transfers and Changes of Name or Address

Objective

These sections simplify procedures for transferring ownership and registering name changes.

Summary of the changes

Transfer - The new Regulations update terminology, replacing the term "Assignments" (in the current Regulations) with the term "Transfers", which is more aligned with international nomenclature. In addition, the Industrial Design Office will no longer require assignment documents. A request to record or register a transfer must be accompanied by the required fee and include the name and address of the transferee. The current fee will continue to apply.

Changes of name or address - The new Regulations codify the current practice to change the name or address of a registered proprietor: the Industrial Design Office will register the change on request from the registered proprietor. No fee will apply for this service.

Section 36 - Time Period Extended

Objective

This section clarifies the days when deadlines will be extended.

Summary of the changes

The new Regulations introduce a provision to clarify existing practice regarding holidays and closures. If a deadline is to fall on one of the days prescribed by the new Regulations (e.g., Canada Day), it will be extended to the next day on which CIPO is open to the public. This list of days will be common across CIPO's other lines of business.

Sections 37 to 39 - Fees

Objective

These sections clarify fee and refund procedures.

Summary of the changes

The fees for each service will remain the same.

A new provision has been introduced to require that a request for a refund be made within three years of the date on which the fee was paid.

The new Regulations also provide the Minister with flexibility to waive fees if circumstances warrant.

Part 2 - Implementation of the Hague Agreement

This part contains new provisions that will apply only to Hague applications or Hague registrations and excludes certain sections of the Industrial Design Act from applying.

Objective

The following sections are all new requirements necessary to implement the Hague Agreement. These provisions were drafted with the goal of minimizing differences in format, content and treatment of a national industrial design application and one received through the Hague System. The Industrial Design Office intends to treat both types of applications equally (e.g., first-in, first-out processing).

Section 40 - Register

Summary of the provision

Hague registrations are recorded in the International Register (not in the Canadian Register). The International Register and items contained in an international registration are evidence of their contents. A copy certified by the International Bureau is evidence of the particulars of the recording or item and is admissible in any court.

Hague registrations will not be republished in the Canadian online industrial design database. Searches of the Canadian database will include Hague registrations and the search results will link to WIPO's Hague Express database, which includes international registrations that designate Canada.

Section 41 - Hague Application

Summary of the provision

Each design in an international registration will be deemed to be a Hague application, filed in accordance with the Industrial Design Act. As such, the name of the product indicated in the international registration will be considered the name of the finished article required under Canadian legislation. The Industrial Design Office will also consider the representation of the design contained in the international registration as the representation for a Hague application. The holder of the international registration is considered to be the applicant in respect of a Hague application.

WIPO will collect and manage fees. If an international registration is cancelled, renounced or limited in respect of Canada, the corresponding Hague application(s) will be considered to have been withdrawn.

Section 42 - Filing Date

Summary of the provision

Specific provisions of the Industrial Design Act respecting filing date will not apply to Hague applications. Rather, a Hague application's filing date will be the date of registration of the corresponding international registration.

Section 43 - Refusal

Summary of the provision

This provision outlines that the Industrial Design Office must not refuse to register a Hague application without first sending the International Bureau a notification of refusal (essentially equivalent to an examiner's first report) within 12 months of the international registration's publication date. If a notification of refusal is not sent within this timeframe, the design will be deemed registered.

Section 44 - Hague Registration

Summary of the provision

Industrial Design Act provisions respecting the registration of a design will not apply to a Hague application. Instead, if the Industrial Design Office is satisfied that a design in an Hague application is registrable, it will send a statement of grant of protection to the International Bureau and the design will be deemed registered in Canada. The date of registration of the design is the date of the statement.

If the Industrial Design Office does not send a notification of refusal within 12 months from the date of publication in the International Register, the design will also be deemed to be registered. In that case, the date of registration of the design will be the first day after the end of that period.

In both cases, the holder of the international registration will be deemed the registered proprietor of the design.

If an international registration is renounced or limited in respect of Canada, the corresponding Hague registration will be considered to have been canceled.

Section 45 - Priority

Summary of the provision

WIPO will handle a request for priority in a Hague application. If WIPO approves the priority request, the Industrial Design Office will consider it to comply with Canadian requirements. Corrections to the priority claim must be directed to WIPO.

Section 46 - Application and Documents Made Available to the Public

Summary of the provision

Some sections of the Industrial Design Act will not apply to Hague applications, as international registrations will be made available to the public by the International Bureau.

The Industrial Design Office will allow for a deferment of publication of up to 30 months for an international registration designating Canada. Any international registration sent in confidence to the Industrial Design Office by WIPO will not be made available to the public.

Section 47 - Duration of Exclusive Right

Summary of the provision

The term of protection for Hague Registration will begin on the date of registration of the design and end on the later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the corresponding Hague application. The term will also end if the international registration expires in respect of Canada.

The International Bureau administers renewals; fees must be paid directly to the International Bureau within five years from the international registration date.

Section 48 and 49 - Transfers

Summary of the provisions

The International Bureau will administer requests for transfers.

This section will include a provision allowing the Industrial Design Office to act as the competent authority to issue an attestation of transfer in cases where the apparent transferee cannot obtain the signature of the holder of the international registration and that holder is a Canadian national.

Section 50 - Appeal or Invalidation

Summary of the provision

This provision will exclude the Industrial Design Act from application and will outline that the Industrial Design Office's final refusal may be appealed to the Federal Court within two months of the day on which the notice is sent. If the refusal is reversed, the Industrial Design Office will send a statement of grant of protection to WIPO.

If a Hague registration is invalidated, the Industrial Design Office will notify WIPO in order for the invalidation to be recorded in the International Register in respect of Canada.

Section 51 - Corrections

Summary of the provision

These provisions will allow the Industrial Design Office to process a correction (e.g., for technical or clerical errors) to an international registration. The Industrial Design Office will also have the flexibility to refuse the effects of a correction.

Section 52 - Extension of Time

Summary of the provision

If the period to issue a refusal on a Hague application or to issue a refusal of the effects of a correction expires on a day on which the International Bureau or CIPO is closed, it will be extended to the next day the International Bureau or CIPO is open to the public.

Section 53 to 55 - Transitional Provision, Repeal and Coming into Force

Summary of the provisions

Transitional Provisions - Transitional provisions carry forward those established in the Industrial Design Act.

For applications filed prior to the coming into force date, some sections of the new Regulations will not apply because the former Regulations will continue to be in effect for those previously filed applications. Table 1 identifies the sections of the new Regulations that would not apply, as well as the corresponding requirements that will continue from the former Regulations. Provisions in the new Regulations that would apply to applications filed prior to the coming into force date are outlined at the bottom of Table 1.

For an application received before the coming into force date, but for which a filing date cannot be established under the former Industrial Design Act, the application will be deemed never to have been filed. It will need to be filed again, under the new Industrial Design Act and the new Regulations.

For applications received after the coming into force date, the new Industrial Design Act and Regulations will apply.

Repeal - The new Regulations will repeal and replace the former Regulations.

Coming into Force - The new Regulations will come into force at the same time as the amended Industrial Design Act, on November 5, 2018.

Schedule - Tariff of Fees

Summary of the changes

The tariff of fees has been updated to reflect terminology for transfers (removing reference to assignment documents). The fees for each service will remain the same.

Table 1 - Applicability of Regulations for applications filed before and after coming into force
New Regulations
Not applicable to applications filed prior to coming into force
  • s. 10 Material not in English or French
  • s. 11 Acknowledegment of protest
  • s. 14 Requirements for representation of design
  • s. 15 Presentation of photographs or reproductions
  • s. 16 Name and address
  • s. 17 Features of shape, configuration, pattern or ornament
  • s. 18 Optional description
  • s. 19 Hague applications
  • s. 20 One design per application
  • s. 21 Filing date
  • s. 22(1) Registration
  • s. 24 Delayed registration
  • s. 25 Amendments
  • s. 26 Priority
  • s. 27 Copy of previously filed application
  • s. 28 Withdrawal of request for priority
  • s. 29 Actions deemed taken in respect of divisional application
  • s. 30 Priority effect of international registration
  • s. 31 Non-application of paragraph 8.2(1)(c) of the Act
  • s. 32 Prescribed date
  • s. 33(1) Maintenance period
Former Regulations
Applicable to applications filed prior to coming into force
  • s. 8(2) Acknowledgement of protest
  • s. 9(1) Prescribed form
  • s. 9(2) Requirements:
    • Name & address of applicant (and agent);
    • Title;
    • Descriptions; and,
    • Drawings must meet the requirements of 9.1 IDR.
  • s. 9.1 Drawing requirements: margins, quality, solid/stippled lines
  • s. 10 One design per application, variants and divisionals
  • s. 11 Filing date
  • s. 12 Document requirements: black and white, paper size
  • s. 13 Document requirements: wholly in French/English, translation
  • s. 16 Amendment to an application
  • s. 20 Priority
New Regulations
Applicable to applications filed prior to coming into force
  • s. 1 Definitions
  • s. 2 Written communications
  • s. 3 Communication not in writing
  • s. 4 Submission of documents, information or fees
  • s. 5 Deemed receipt - Office
  • s. 6 Electronic communications
  • s. 7 Address
  • s. 8 Written communications in respect of application
  • s. 9 Manner of presentation of documents
  • s. 12 Power to appoint agent
  • s. 13 Content (Register)
  • s. 22(2) Objections
  • s. 22(3) Objections to Hague application
  • s. 22(4) Extension
  • s. 22(5) Limitation on extensions
  • s. 22(6) Deemed abandonment
  • s. 22(7) Reinstatement
  • s. 23 Request for accelerated examination
  • s. 33(2) Deadline for payment (Maintenance of Exclusive Right)
  • s. 33(3) Exception (Maintenance of Exclusive Right)
  • s. 34 Change of name or address
  • s. 35 Request to record or register transfer
  • s. 36 Prescribed days (Time Period Extended)
  • s. 37 Fees for services
  • s. 38 Refund excess fees
  • s. 39 Waiver of fee

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