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Changes to Canadian Industrial Design Practice

March 28, 2017

Industrial design registration remains an underutilized form of intellectual property protection. In Canada, an original industrial design can be registered to protect the look and appearance of a finished article. Unlike a patent, which protects the way an article is used or functions, an industrial design registration protects the visual features of an article, such as the article’s shape, configuration, pattern, or ornament. Registration of an industrial design provides exclusive right to the use of the design for up to 10 years, beginning on the date of registration. As an industrial design application is typically straightforward and issues to registration much faster than a patent application, it can be a timely and cost-effective mechanism to obtain an important form of protection for your product. The recent changes in the Canadian Intellectual Property Office (CIPO)’s industrial design office practices seemingly bolster the benefits of seeking industrial design protection in Canada while also serving to align the office’s practices with international norms.

The Changes

Computer-generated animated designs:

CIPO already accepts applications for registration of industrial designs covering computer icons and software user interfaces. In particular, the Office examines icons or user interfaces as a static design applied to a finished article. For example, the appearance of icons and user interfaces is often protected by being featured in a design for a display screen of a mobile or computing device.

In what can be understood as further recognition of the importance of protecting original user interface designs, the Office has announced that computer-generated animated designs are registrable subject matter. Whereas previously the different states of animated designs were examined as either distinct designs or variants, under the new practice, computer-generated animated designs will be considered as a single design. In particular, the drawings submitted for an animated design will be viewed as a sequence of frames.

Colour as a registrable feature:

In Canada, when applying to register a trademark consisting of a design (e.g. a logo), an applicant may claim a colour as part of the trademark for which protection is sought. The colour claims need to be described and, if such description is not clear, the applicant may be required to file a drawing for the design that is lined for colour in accordance with a prescribed colour chart.

The Office now recognizes that colour may also form part of an industrial design. In particular, under the Office’s new practice, colour will be recognized as forming part of a combination of features that constitute a design. Colour by itself, however, is not considered to fall within the definition of a design. If a design includes colour as a feature, the application must state that colour forms part of the design, and drawings or photographs filed in respect of such application must be filed in paper form and in colour.

Reducing time limits to respond to office actions:

The deadline for applicants to respond to an examiner’s report for an industrial design application has been reduced from four months to three months. (By comparison, the period for reply to an examiner’s report for a Canadian patent application is six months.) The shortened time for reply to an examiner’s report may facilitate timelier issuance of industrial design rights for applicants.

Search to assess originality where there is a priority claim:

Previously, the Office conducted the prior art search for an industrial design at six months from the filing date of the application. Under the new practice, the prior art search will be conducted as early as six months from the priority claim date for the application if an applicant voluntarily submits certified documents that support the priority claim.

New notices of possible refusal:

Traditionally, the Office would issue a “Final Report” upholding its objections to registration. If an applicant failed to respond to that report, the application would become abandoned. The “Final Reports” are now being replaced by “Notifications of Possible Refusal”. The applicant has three months from the date of such notification to request a review of the file by the Patent Appeal Board. The failure to respond within the three months will result in the application being considered for refusal and the decision, taken on behalf of the Minister, will be communicated to the applicant.

Delaying the registration of an application:

Some countries may reject an industrial design application if a design has already been registered in another country. An applicant may thus want to delay the registration of an industrial design (e.g. an approved, or “allowed”, design) to have time to file the application in another country. The Office processes such requests for delay at any time before registration. Upon receipt of the prescribed fee ($100) for delaying registration prior to its approval for registration, the registration will be delayed for up to six months, beginning on the latest of: date of allowance of the subject application, date a previous delay of registration expired, or date the request was received. If no such request to delay is received, an industrial design is registered the day after the application is allowed by the Office.