November 5, 2018, marks an important step in the evolution of the industrial design regime in Canada. Numerous and substantial amendments to the Industrial Design Act and Rules are now in force. These amendments modernize Canada’s industrial design law and bring it into better harmony with other jurisdictions. Here are some of the most important highlights that apply to applications filed on or after November 5, 2018:
- Divisional applications provide more flexibility than before. An applicant may now file a divisional application for any design that was originally disclosed – not merely claimed – in the parent application as filed. For example, the Canadian Industrial Design Office has indicated that the applicant is able to file a divisional application with portions of the design in solid lines that were shown in dotted lines in the parent application as originally filed, and vice versa. Divisional applications also remain available for cases where the Canadian Industrial Design Office issues an Examiner’s Report objecting to an application as containing more than one design.
- The term of protection and grace period are more favourable to rights owners. Under the amended Act, the term of protection begins on the date of registration and ends the later of a) ten years from the date of registration of the design and b) fifteen years from the filing date, in each case subject to payment of a single renewal fee. Previously the term of protection was limited to ten years from the date of registration. Moreover, the one-year grace period for prior disclosure now extends from the application’s priority date. As a result, when priority is claimed, any public disclosure by the applicant of the applied-for design in the year preceding the earliest priority date will not be citable against the application.
- The rules surrounding the content of applications have been eased. A description of the design or statement of limitation are now optional. Without a statement of limitation, the application is deemed to relate to all of the features of "shape", "configuration", "pattern" and "ornament" shown in the representation of the design unless an exception applies, such as the use of dotted lines in the drawings to exclude features from the claimed design. Furthermore, a wide range of drawing techniques are now acceptable and an application may include line drawings, photographs and/or CAD models.
- Canada can now be designated in international applications filed under the Hague System for the International Registration of Industrial Designs. The Canadian Industrial Design Office will treat each design included in the international application as a separate, so-called “Hague application”, which will be substantively examined. If the Canadian Industrial Design Office does not issue a Notification of Refusal within one year of the publication of the international registration, the Hague application(s) will automatically register as enforceable Hague registration(s) in Canada. If a Notification of Refusal is issued, the applicant will have an opportunity to respond in the same manner as it would to an Examiner’s Report issued for a domestically filed application.
The above and other changes to the Act and Rules usher in an exciting, new era for industrial designs in Canada. They also comprise the first of a whole host of amendments to Canada’s intellectual property regime to come into force. Amendments to both the patent and trademarks regimes are scheduled to come into force in 2019, as discussed in our earlier IP Updates.