Design Applications: Updates on Key Changes, and Preventing Portfolio Loss27/02/2017
Exciting new changes have been implemented at the Canadian Intellectual Property Office (CIPO) related to industrial design practice. These changes are essential for applicants to be mindful of, and some of the changes may prove highly beneficial for applicants seeking design registrations in Canada.
Industrial designs are a useful tool for protecting icons and other aspects of graphical user interfaces (GUIs) displayed on computers, mobile phones, and other electronic devices. These GUIs often include animations, which until recently, were costly to protect in Canada.
In its latest practice notice, the Canadian Industrial Design Office will now examine multiple states of a computer-generated animated design as a single design, greatly simplifying and reducing costs for clients who wish to protect computer animations.
In the past, the Office required each “frame” of a computer-generated animated design to be filed as a separate application. This was inconsistent with international practice and significantly increased filing fees and prosecution costs for applicants.
Applicants can now file a single application containing a sequence of frames or states disclosing the animated design for which protection is sought. Applicants who are currently facing objections under the Office’s previous practice, that their figures need to be divided, can ask to be examined under the new practice notice. It remains unclear, however, whether applicants that have already divided out their animated designs can now rejoin them as a single application.
If you have an animated design you wish to protect, or have questions regarding an application that was previously divided to overcome an objection, please contact us to discuss your options.
The introduction of colour to industrial designs in Canada creates new opportunities for applicants to include colour schemes in their design applications. All colour claims must be in combination with other features of the design. Colour which is independent of a design remains unregistrable.
In the past, applicants could only claim visually contrasting tones, but not any particular colour. Under the new practice, colour can now be claimed for any design, so long as the drawings are filed in colour. This latter requirement highlights some practical difficulties, since registrations will still be issued in black and white and no standard cross-hatching colour key exists in Canada.
In theory, a design that might otherwise lack sufficient differences from the prior art may now be allowable if an original colour claim is also included in the application. Applications can also be filed with and without colour claims as part of a multi-layered filing strategy as a further defence against the prior art.
If colour was previously removed as a design feature in a pending application, it may now be possible to re-introduce the colour claim. The Office has indicated that there will be no need to file a new application. Examiners have been instructed, however, to examine each application on a case-by-case basis and reach their own conclusion as to whether the amendment will be accepted.
If you would like protect a design with colour, or would like to re-introduce colour as a feature in an existing design, please contact us to discuss your options under the revised practice.
One key change to note is that the deadline for Applicants to respond to an examiner’s report has been shortened from four months to three months.
If you would like to discuss your options regarding this shortened deadline, please contact us.
Timing of search to assess the originality of an industrial design application where there is a priority claim
Another important change is that the search for prior art will be conducted as early as six months from the date of priority, in the case where the applicant voluntarily submits a certified copy of the foreign application on which the priority claim is based, and that document supports the priority claim.
The previous practice for industrial design application was that the search for prior art was conducted no earlier than six months from the Canadian filing date.
If you have any questions regarding the timing of the search for prior art please contact us to discuss your options under the revised practice.
New notices of possible refusal
Effective immediately, the practice of issuing “Final Examination Reports” will be replaced by a “Notification of Possible Refusal.” Previously, the Industrial Design Office would issue a “Final Examination Report” in the event it upheld its objections to registration. Failure to respond to that report would have led to abandonment of the application. After six months, the abandoned application would become inactive.
Now, once a Notification of Possible Refusal is issued, the applicant will have three months to request a review of the file by the Patent Appeal Board. If no response is received within three months of the notice, the application will be considered for refusal and a decision on refusal will be communicated to the applicant.
If you have any specific questions regarding the receipt of a notice of possible refusal please contact us to discuss your options under the revised practice.
Delay of Registration
An additional change to Office Practice is that under the new practice change, the Office will grant a delay of registration of up to six months from the date of allowance.
Previously, the practice was to start the delay on the date when the request for a delay of registration was received by the Office.
The delay of registration is particularly useful and beneficial for applicants.
A parent can be cited against a child application
In Canadian Industrial Designs, a parent design registration can be cited against a child application. Therefore, this presents a hidden pitfall for applicants. Often Applicants provide ID applications one at a time, without indicating that they are related. The first one registers, which is then citable against all of the remaining applications. The client loses the remainder of their portfolio as a result.
As an example, an applicant aims to register a design for a cup. In the first design submission a pattern is in one location on the cup. The design registers. Shortly after, the client submits a second design for a cup with a similar pattern, but in a different orientation. The registered design is now cited against the secondarily submitted design application. It is virtually impossible to attain a positive result and allowance on the secondarily submitted design. The applicant loses the balance of the portfolio as a result.
Hold back registration
It is therefore of utmost importance that related ID applications register on the same day, and that registrations are held back. As noted above, once an ID registers, it immediately becomes citable against any divisional applications or related applications. It is then nearly impossible to overcome the rejection and argue that the subsequently filed application is distinct from the registered industrial design.
However, if registration is held back, all of the applications will be registered on the same day, and issues related to the citability of the parent against the child are eliminated.
Practice Tips Regarding the Delay of Registration
Given the above changes, we recommend the following. A request for the delay should be submitted concurrently with filing the application. This would provide 6 months delay, normally commencing on the date that the application is allowed. An applicant can therefore reduce the citability of a parent registration against a child application, and can attain maximum protection.
It is important to further note that a design registration has term of 10 years from the date of registration. The delay of registration would be a relatively inexpensive way to extend the term of protection by 6 months and, further, delay payment of the renewal fee.
For further questions regarding this delay of registration, please contact us.
The present changes will be welcome news for applicants, particularly those seeking design protection in multiple countries.
Further changes to Canada’s industrial design system are expected in view of Canada’s commitment to join the Hague System, which is required under the Canada-European Union Comprehensive Economic and Trade Agreement (“CETA”). These changes have not yet come into force, but will bring further harmonization for industrial designs in Canada.
This article is for information purposes only and does not constitute legal or professional advice.