Practical Effects of Incoming Industrial Design Changes

Nov 05 2018

Significant changes to Canada’s industrial design legislation are coming into force on November 5, 2018. We previously summarized some of the incoming changes here.

This article discusses some practical effects for those holding or pursuing industrial design rights in Canada under Canada’s new industrial design regime.

How Industrial Design Proprietors May Benefit

The changes provide rights holders with opportunities to leverage both cost benefits and procedural efficiencies.  For example:

  • Canadian applicants may now access the “Hague System” by filing a single application with the World Intellectual Property Organization under the Hague Agreement Concerning the International Deposit of Industrial Designs in order to obtain design registration in up to 69 jurisdictions;
  • foreign applicants may now designate Canada within an application under the Hague System instead of filing a separate application directly in the Canadian Intellectual Property Office (“CIPO”); and
  • filing an industrial design application in Canada is now much easier. Less information will be required to obtain a filing date, which will be particularly helpful where a deadline to file is pending.  Applications are also now less formal, which allows for greater compatibility with foreign practices.

How the Registration Process Will Change

Industrial design holders must be aware of procedural changes to the registration process so that they understand how their rights are affected. For example:

  • there is now an advantage to promptly responding to the Examiner’s Reports.The term of registration will be the longer of: (a) ten years from the registration date; or (b) fifteen years from the application date.  Applicants who complete prosecution within five years of the filing date will benefit from a longer period within which to enforce their rights;
  • applicants will now only have three months to respond to an Examiner’s Report. Only one six-month extension of the initial deadline is available. Failure to respond to an Examiner’s Report within nine months of the Examiner’s Report will lead to abandonment of the application. Abandoned applications may be reinstated within six months of abandonment;
  • rules regarding publication of the design by CIPO will change. Pending applications will now be published 30 months from the earlier of the priority date or the Canadian application filing date.  Avoiding publication of the design before the registration issues is thus another benefit of promptly responding to Examiner’s Reports; and
  • There will now be an additional benefit to recording assignments of industrial design rights with CIPO. The new legislation provides that an earlier unregistered assignment will be void against a later registered assignment.

Transitional Provisions

Not all industrial design holders will be immediately affected by these changes:

  • existing design registrations in Canada will continue to be governed by the existing legislation as it read prior to November 5, 2018;
  • pending applications filed before November 5, 2018 will continue to be governed by the existing legislation as it read prior to November 5, 2018, with some notable exceptions.  This includes the accelerated three-month deadline for responding to Examiner’s Reports; and
  • applications filed after November 5, 2018 will be subject to the new legislation.

This article is for information purposes only and does not constitute legal or professional advice.

Authors: Timothy Bourne, Andrew Montague (former associate)

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Tags: Hague Agreement, Industrial Designs, Timothy Bourne