Colour is registrable feature
Examination of computer-generated animated designs
Earlier examination when certified copy of priority application filed
Other changes
Comment
The Industrial Design Office has announced changes that significantly modernise and streamline six of its office practices, substantially benefiting applicants seeking protection for their designs in Canada.
Chief among these changes is that colour will now be registrable as a feature of the design in combination with other design features. Effective January 16 2017, applicants will be able to claim colour as part of a design by filing colour photographs or drawings and stating in the design's description that colour is a feature of the design. This change significantly broadens the scope of subject matter available for registration.
Examination of computer-generated animated designs
Another change of significant benefit to applicants is the manner in which computer-generated animated designs will now be examined. Previously, every state of an animated design was treated as a separate design, often requiring applicants to file multiple divisional applications to protect all states in an animated design. Under the new practice, the entire animation will be examined as a single design. Drawings of the design will be viewed as a sequence. Thus, the cost associated with obtaining registrations for animated designs should be significantly reduced.
Earlier examination when certified copy of priority application filed
A further highlight of the Industrial Design Office's announcement is that applicants will be able to obtain earlier examination in the case of designs that have a foreign priority claim. Previously, the Industrial Design Office did not begin searching applications for originality until at least six months after the filing date, irrespective of the priority date being claimed. Effective January 16 2017, the office will search for originality as early as six months from the priority date if a certified copy of the priority document is submitted by the applicant. Thus, by filing a certified copy of the priority application, applicants can shorten the time to examination without having to pay any government fees for doing so.
While the changes highlighted above provide the greatest benefits to applicants, the remaining changes are still worth noting:
- The time limit for responding to examiners' reports has been shortened from four months to three months, with the intention of speeding up the prosecution process.
- A delay of registration will now commence from a more relevant date ‒ namely, the latest of the following:
- the date of allowance of the application;
- the date that a previous delay of registration expires; or
- the date that the request for delay of registration is received.
- Lastly, for more certainty, the Industrial Design Office will issue a further communication to the applicant where a final rejection by an examiner is not appealed, rather than simply noting the application as abandoned.
Overall, the changes will align Canadian industrial design practice with that of other major jurisdictions and will allow applicants to obtain faster, broader and more cost-effective design protection in Canada.
For further information on this topic please contact Christine Genge or Lionel Fishman at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.