Industrial Designs: Update on the practice in Canada.

by A. Provost & T. Zhang

Last January 16th, the Industrial Design Office, part of the Canadian Intellectual Property Office (hereinafter referred to as “CIPO”), issued six official practice notices (hereinafter referred to as “Notices”), to bring forth certain changes to Canadian practice.

An industrial design is used to protect such features as shape, configuration, pattern or ornament, or any combination of these features, applied to an article made by hand, tool or machine. The Industrial Design Act defines a design as follows: “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.” There are two main requirements: 1) a finished article and 2) visually appealing feature(s).

Color is now a feature eligible for design protection

Despite the broad definition for a design, the colors of an article were not considered as being part of the features of the design under CIPO’s previous practice.

One of the Notices states that CIPO is now of the view that color may form part of the set of features of a design. CIPO thus aligns its practice with the practices already in effect in several other countries. For example, among the multiple patents at issue in the dispute between Apple and Samsung in the United States, U.S. design patent D604,305 directed to icons on a screen has color as one of its features.

A computer-generated animated design is also eligible for design protection

CIPO’s practice already allowed for the registration of a static computer icon, as long as the icon is shown as being applied to a finished article. This requirement could be satisfied by submitting figures that show the icon displayed on a computer screen while indicating that the screen is part of the environment and does not form part of the design.

A second of the Notices states that requests for a computer-generated animated design are to be examined as a single design applied to a finished article. This type of icon is most often found on the loading screen of a software program.

The second notice states that an application for an animated design may be made by submitting drawings showing a sequence of frames of that design.

New sections of the Trade-marks Act will also permit registration of a trade-mark that contains animation. A company seeking to protect an animated icon will have to make a strategic choice as to the appropriate form of protection according to their needs.

Change in practice affecting the filing of divisional applications

When an examiner considers that an industrial design application contains more than one design, the examiner will require that the application be limited to a single design. The other designs may be filed within one or more divisional applications. A divisional application must be filed before registration of the initial application, after which protection for the other designs will no longer be possible. A registration of an application occurs on the day after an application is allowed by an examiner and the applicant is not notified of that allowance. Accordingly, an applicant must plan properly to ensure that the filing of the divisional application(s) are made prior to registration of the first design.

A third of the Notices states that when CIPO receives a request for delay of registration, as well as the appropriate fees therefor, the registration of the design will be delayed for a maximum of six months. This time period starts from the later of: the date of allowance of the application and the date the request for delay of registration was received.

If the delay of registration is accepted, CIPO will send a letter indicating the start of the six-month delay and the earliest possible date of registration once the delay expires.

Consequently, where an applicant becomes aware that the examiner considers an application to contain more than one design and that the applicant still wishes to obtain protection for multiple designs within that application, we suggest either immediately filing the divisional application(s) or immediately requesting a delay of registration.

Obtaining earlier examination and registration of a design

Under various treaties to which Canada is a member, an applicant has a six-months period following the filing of an initial design application to file corresponding applications in other countries. However, because some countries may reject a design application if that design has already been registered elsewhere, CIPO’s practice was to only begin a search for prior art once six months have elapsed since the application was filed in Canada.

The fourth of the Notices states that going forward, CIPO will commence the search before the expiry of the six-months period from the Canadian filing date if the applicant submits a certified copy of the foreign application on which the priority claim is based.

This practice may be useful to trigger an earlier prior art search, which may also lead to an earlier registration of the design in Canada.

Two other changes

Going forward, the prescribed period for replying to an Office Action will be three months and not four months as was the case before.

Previously, CIPO issued a “Final Report” and the application was deemed abandoned if a response to the Final Report was not submitted. This Final Report will now be replaced by a “Notification of Possible Refusal”. The applicant will then have a three-months period to request a review by the Patent Appeal Board.

Although an industrial design is used less often than a patent or trademark, it can be effective in some circumstances. For example, it is often possible to obtain registration of an industrial design more quickly and at a lesser cost than a utility patent. We invite you to contact us to determine if this form of protection is appropriate for your business.