With statutory amendments passed into law, and regulatory amendments now drafted, Canada is modernizing its industrial design legislation. The changes would implement the Hague System for international registration of designs and better align Canada’s industrial design legislation with major trading partners.
By way of background, the Industrial Design Act was amended in 2014-2015 to include the following changes (not yet in force). The term will be extended to the later of 10 years from registration or 15 years from filing. The originality test will be replaced with a novelty requirement. The changes will implement the Hague System, with Canada joining 66 contracting parties including the US, the European Union, Germany, the Republic of Korea, and Japan. It will be easier to correct errors before the Canadian Intellectual Property Office.
On June 19, 2017, draft regulatory amendments were released for public consultation. An overview of some of the draft regulatory amendments is provided below.
- Representations. The requirements for representations would be loosened to permit one or more photographs, graphic reproductions, or any other visual reproduction in combination, rather than either drawings or photographs.
- Divisionals. It would be possible to file a divisional application for registration of a design that was “disclosed” in the original application (rather than only a design to which the original application relates). Accordingly, it appears that, even if several designs are not separately disclosed, or perhaps disclosed in environment, they could be divided out.
- Publication – It would be possible to delay publication (or registration) for up to 30 months from the priority date. This would minimize the risk of early publication for applicants.
- Extensions – Extensions of six months would be available for responding to an Office Action. Also, extensions would apply to a time limit ending on a day on which the Commissioner of Patent’s office is closed for business. In that case, the time limit would be extended to the next day on which the office is open for business. A comprehensive set of (dies non) days are prescribed, including any day on which the Office is closed to the public, Saturdays (to be clear), and Sundays. A time limit like a priority deadline, falling on a day closed for business, would be extended to the next business day.
- Novelty. The novelty requirement would not apply in respect of a design that has been disclosed in another application that was filed in Canada by the same person, if the filing date of the pending application is within 12 months after the filing date of the other application. This would effectively provide a period of time during which similar designs could be filed while avoiding the risk of self-collision.
- Environment. The limit on environment to one view would be abolished, with the result that environment could be included in multiple views.
- Schedule of fees – The government fee for examination of an application would remain the same (there is no additional government fee for multiple variants).
The consultation period on the draft amendments is from June 19 to July 14, 2017. Proposed regulatory amendments would need to be introduced before Parliament, and then ratified to be passed into law. The statutory and regulatory amendments would come into force on a day that has yet to be announced, but it is expected that they would come into force in early 2019.
If the draft amendments come into force in their current form, they would benefit applicants by affording flexibility on divisional content, control on publication, and same government cost on examination for one design or multiple variants.
