Lionel Fishman Christine Genge June 5 2017 Prepare for Canada Day by reviewing your pending industrial design applications Smart & Biggar | Intellectual Property - Canada Lionel Fishman, Christine Genge Intellectual Property IntroductionColourAnimated designsDelays of registrationCommentIntroductionIn addition to being Canada's 150th birthday, July 1 2017 marks the deadline for taking certain actions in respect of pending Canadian design applications.On January 16 2017 the Industrial Design Office altered its treatment of design applications in a number of areas (for further details please see "Colourful designs and a streamlined practice get the green light").In response to consultations with members of the profession, the Industrial Design Office has now clarified certain procedural aspects by releasing additional guidance. Among other provisions, the guidance outlines how applicants can have certain new practices (eg, those relating to colour and animated designs) applied to pending applications filed before the new practices came into effect on January 16 2017.This update addresses certain actions which must be taken by July 1 2017 in order to allow eligible legacy applications to take advantage of the new provisions.ColourIn combination with other features, colour may now form part of a claimed design in Canada.The Industrial Design Office will attempt to identify pending applications filed before January 16 2017 that claimed colour and will hold these applications back from registration until July 1 2017. During this period, applicants can petition the Industrial Design Office and amend these applications to conform with the new practice: colour drawings or photographs must be submitted in paper form and the description must properly claim colour.Applicants that do not want their applications to be held back for this reason can simply ask the Industrial Design Office to proceed without delay.However, the Industrial Design Office cannot identify every application where there was an intent to claim colour. Consequently, applicants should review their pending applications filed before January 16 2017 and identify those where there was an intent to claim colour in order to advise the Industrial Design Office accordingly by July 1 2017.Animated designsFrames of an animated design are now considered as a sequence, rather than separate individual designs. Frames need no longer be substantially similar in order to remain together in one application.The Industrial Design Office will attempt to identify pending applications filed before January 16 2017 that claimed an animated design and will hold these applications back from registration until July 1 2017. During this period, applicants can petition the Industrial Design Office to have the pending application re-examined according to the new practice.Applicants that had already filed one or more divisional applications because of how animated designs were previously examined may amend the parent application to re-integrate the frames from the divisional applications. The divisional applications would then have to be withdrawn.Applicants that do not want their applications to be held back for this reason can simply ask the Industrial Design Office to proceed without delay.As the Industrial Design Office cannot identify every application that claimed an animated design, applicants with pending applications filed before January 16 2017 where an animated design is being claimed and that wish to have their applications examined under the new practice should advise the Industrial Design Office accordingly by July 1 2017.Delays of registrationDelays of registration, which may be repeatedly requested in increments of up to six months, now begin on the date of allowance of the application. Previously, the delay began on the day that the request was received.Where an application is currently subject to a delay requested before January 16 2017, the applicant may petition the Industrial Design Office to have a delay of registration come into effect on the date of allowance of the application, rather than on the date the request was received. No government fee will be levied for this request.CommentThe aforementioned items may require prompt action on behalf of applicants in order to take advantage of new provisions in the case of older industrial design applications already primed for this change. The Industrial Design Office has also released guidance on a number of other points that will aid implementation of its new practices.For further information on this topic please contact Lionel Fishman or Christine Genge 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.