On November 5, 2018, Canada’s amended Industrial Design Act and Regulations came into force. Among other things, the new law permits the filing of divisional applications for any design applied to a finished article that was disclosed in the original application on its filing date. Dividing a single application and prosecuting multiple applications to registration can maximize the scope of protection for the applicant. Even designs depicted as environment can form the basis of a divisional application if it is fully disclosed in the original application.
As used herein, the term “original application” refers to the pending application that provides the basis for the divisional application. The original application can also be called the “parent”. If the original application is itself a divisional application, the term “earliest original application” refers to the very first in the series of applications from which the divisional application results.
Applicants should be aware that divisional applications are subject to strict due dates as follows.
1. Identifying statement – 3 months after filing
The applicant must include a statement that identifies the application as a divisional. This statement must be submitted to the Design Office as part of the application on filing, or in a separate document no later than three months after the filing date of the divisional application.
The best practice is to indicate that an application is a divisional when it is filed, to avoid this due date altogether.
2. Voluntary divisional – 2 years after earliest original application
A divisional application must be filed within two years of the filing date of the original application or, if the original application is itself a divisional application, within two years of the filing date of the earliest original application.
During the two-year window, a divisional application can only be filed if the application being divided is pending (the application must not be withdrawn, abandoned and past the reinstatement date, refused or registered). Only the parent needs still to be pending; it is acceptable if earlier ancestor applications (including the earliest original) have registered.
Requesting a delay of registration on the original application can be done to ensure that the original application remains pending. To delay registration, the request and the required fee should be submitted as soon as possible to ensure that it is technically possible to delay registration.
The subject matter of the voluntary divisional application can be any design applied to a finished article that was fully disclosed in the earliest original application.
3. Divisional following restriction requirement – 6 months after amendment
There is an exception to the two-year rule. Beyond two years from filing the earliest original application, a divisional application can still be filed if an Examiner report requires that the application be limited to one design. Filing a response to the Examiner report, which limits the application to one design, triggers a 6-month period for filing divisional applications.
During the 6-month period, a divisional application can only be filed if the parent application is pending. Again, only the parent needs still to be pending; it is acceptable if earlier applications have registered. As above, requesting a delay of registration can be done to ensure that the original application remains pending.
Since filing a response that restricts the parent application to one design will normally put the application in condition for allowance, the best practice is to file the divisional concurrently with the response.
The subject matter of the divisional application(s) filed pursuant to a restriction requirement must be the design(s) identified as being separate in the Examiner report.
These due dates and filing considerations complicate divisional practice for Canadian industrial designs, and the observations come with the standard recommendation that applicants looking to obtain or maintain design protection should get professional advice.