The final version of the new Industrial Design Regulations (Regulations) was published in Part II of the Canada Gazette on June 27, 2018.
A stated objective of the Government of Canada in introducing the new Regulations is to carry out amendments made to the Industrial Design Act in 2014 to facilitate Canada's accession to the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement).
Accession to the Hague Agreement will enable Canadians to access an international registration system administered by the World Intellectual Property Organization (WIPO) by which industrial designs can be protected in multiple countries or regions through a single application, filed in one language and with fees paid in one currency. There are currently over 60 countries and regional associations that are party to the Hague Agreement, including most of Canada’s major trading partners.
The new Regulations are also intended to update, codify and improve aspects of the current regulatory framework, as part of an overhaul and modernization of the industrial design regime in Canada. The notable changes which we previously discussed in a related article, in respect of draft Regulations, are also found in the new Regulations. In particular, the new Regulations afford flexibility on divisional content, control on publication, and same government cost on examination for one design or multiple variants.
Since publication of proposed Regulations in the December 9, 2017 edition of the Canada Gazette, Part I, and a public consultation period between December 2017 and January 2018, we additionally note the following changes.
Communications
Section 6 - If applicants consent to receiving electronic communications, they will only be deemed to receive communications through the specific electronic means they choose. The change will permit the Industrial Design Office to correspond with applicants electronically.
Divisional applications
Subsections 20(5) and (6) - The time period for filing a divisional application will change from any time before registration of the original application, to within 2 years after the filing date of the original application. This limit will not apply in the case where an objection is raised to the application failing to be limited to one design applied to a single article, the application is amended to no longer relate to the same design or article, and the divisional application is filed within 6 months of the amendment.
Priority
Subsection 27(6) - The Industrial Design Office will remove the applicant's priority request in cases where the applicant does not, when requested, provide a copy of their priority document before a deadline. In such cases, the priority claim will be deemed to have been withdrawn, as opposed to being deemed not to have been made.
Canada’s accession to the Hague Agreement and modernization of the industrial design regime also include planned improvements to e-services for clients and publication of a new Industrial Design Office Practice Manual, which sets out internal Office practices and procedures and will now include how the Industrial Design Office will implement the regulatory and legislative changes required for Canada to accede to the Hague Agreement.
The new Regulations will come into force, at the same time as the amended Industrial Design Act, on November 5, 2018.
