On January 16, 2017, the Industrial Design Branch of the Canadian Intellectual Property Office (CIPO) issued six practice notices introducing important changes related to both registrable subject matter in designs and prosecution procedures for design applications. Together, these practice notices are expected to reduce the costs of registering designs in Canada, and may increase the scope of the protection which can be obtained for some types of designs. They will also bring the Canadian regime closer to that of other countries, which should result in more consistent outcomes internationally.
Because the policy changes included in the practice notices come into force immediately, Canadian practitioners and applicants alike should be aware of how the new practices affect both their pending applications, as well as their prosecution strategy for future Canadian filings.
This article describes each of the six notices in turn. First, it summarizes the content of the notice, and compares it to the previous practice adopted by the Office on that issue. Next, it summarizes what these changes mean for you as an applicant for industrial design registrations in Canada.
1) COLOUR AS AN ELEMENT OF A DESIGN
In keeping with practices of other Industrial Design Offices around the world, the Office will now accept colour as a claimable element of a design. Although a colour by itself is not independently registrable—even when applied to a finished article—a colour can now form part of the combination of features applied to an article that is claimed by the registered design.
Due to current technological limitations, the Office will only accept colour drawings and photographs submitted in paper form, although it is conceivable that the Office’s equipment could be updated in the future to allow colour drawings to be filed in electronic form.
Moreover, drawings will only be available in black-and-white format on the CIPO Online Database. The colour version of the drawings can only be obtained by ordering a copy of the prosecution history of the design from the Office.
What this means for you:
With this change, the Office is removing one of the last hurdles that prevented applicants from obtaining the same protection for a design in Canada as they would have in other countries. Previously, the Office would have objected to any reference to colour in the application and would have treated colour drawings and photographs as black-and-white drawings. An applicant filing the same colour design in multiple jurisdictions would have had to amend the application prior to filing the application or in response to an examination report issued by the Office after the filing of the application. The new practice obviates the need to make such an amendment. Now, the application filed in Canada could be substantially similar to the application filed in other countries, making it easier for applicants to extend protection of their design to Canada.
It should be noted that, as with any design application filed in Canada, the design will be subjected to a search and an assessment of originality by an examiner. The applicant should bear in mind that although a colour could be an important element of a design, it may not be sufficient to distinguish the design from a substantially similar prior design and therefore may not be registrable on the basis of this colour alone.
The applicant will also have to make sure that drawings submitted in colour are of the highest quality. It is already not unusual for the Office to object to drawings which are pixelated or which have blurry lines. When submitting colour drawings, the applicant will further have to make sure that the contrast between differently-coloured zones is sufficient to allow examiners to properly view the different features of the design. It will also be the applicant’s responsibility to make sure that original colour of the design is properly reproduced in the printed material submitted to the Office.
Following the release of the practice notices, the Office put in place transitional measures to address the treatment of pending applications which originally claimed colour as an element of design. Only a few weeks ago, an examiner may have requested that colour be removed as a design feature from the application, and the agent in charge of the application may have complied with this request. Now that colours are accepted in designs, it only makes sense that pending applications be examined under the new practice. Therefore, the Office announced that if reference to colour was removed from an application during prosecution and if the application is still pending, it will be possible to reinstate references to colour in the application.
However, the Office warns that allowability of such an amendment will be decided by the examiner on a case-by-case basis, and that the amendment may ultimately be refused at the examiner’s discretion. Unfortunately, the Office offered no further insight into what could support such a decision from the examiner.
2) COMPUTER-GENERATED ANIMATED DESIGNS
The Office has implemented a new practice concerning computer-generated animated designs, which essentially makes this type of design registerable in Canada for the first time.
The term “computer-generated animated design” is generally associated with animated graphical user interfaces or GUIs but can extend to any type of computer-generated animation. An application for an animated design usually includes a set of drawings in which each drawing shows a separate frame of the animation.
Previously, the Office considered that each frame was a separate design and, consequently, the examiner would request the application be divided into multiple applications. Each application then had to be prosecuted separately and would eventually lead to the registration of a design which only covered the specific frame which was included in the application.
Under the new practice, the drawings will be viewed as a sequence of frames defining an animation and will be examined as such in the original application. Accordingly, the registration based on this application will cover the entire animation.
What this means for you:
Dividing an application for an animated design into multiple single-frame applications had the effect of reducing the animation to a mere series of still images. It also increased costs, since each frame was to be prosecuted in a separate industrial design application. Ultimately, the applicant would have to prosecute multiple divisional applications in order to obtain protection which was in essence inferior that what might have been obtained in other jurisdiction where animations are registrable (including the United States and, more recently, China and South Korea). With the new practice, the applicant will finally be able to obtain a form of protection which fully captures the dynamic nature of animated designs, in addition to benefiting from significant cost savings that come from filing and prosecuting a single application rather than multiple applications.
While some countries require that animated designs be specifically designated as such in their application, the Office has not announced similar requirements for Canadian applications. It therefore appears that the examiner could be left to decide whether it is clear that the application covers an animation or whether further clarification is required in the specification.
The Office has put in place transitional measures for pending animation applications for which a request that the application be divided has been issued. If the applicant has not yet replied to this request, the applicant can ask that the application be examined as a single animated design under the new practice. On the other hand, the Office has yet to clarify whether pending applications which were divided in response to such an objection from an examiner can now be rejoined in the same application. Without formal guidance from the Office, this decision may be left to the examiner’s discretion at the moment.
3) TIME LIMITS TO RESPOND TO EXAMINER’S REPORTS
The time limit to respond to an Examiner’s Report has been reduced from four months to a more standard period of three months. All Examiner’s Reports issued before January 16, 2017 still benefit from the original four-month deadline.
What this means for you:
Applicants will have to make sure that their deadlines are docketed according to the new time limit, especially practitioners using an automated docketing tool which may need to be manually updated.
Fortunately, the Office systematically indicates the deadline to respond to the office action at the end of every examination report, making the transition to the new practice essentially painless for savvy practitioners.
For applicants who may be worried that the new time limit may not provide enough time to prepare a proper response, the Office will still continue with the practice of automatically granting a six-month extension of time to respond to a report upon request.
4) TIMING OF SUBSTANTIVE EXAMINATION OF APPLICATIONS
The previous practice of the Office was to delay the assessment of the design’s originality (i.e. the substantive examination of the application) for a period of six months after the filing date of the application. This delay corresponds to the period during which corresponding applications claiming priority from the Canadian application under the Paris Convention could be filed in foreign countries.
However, in many cases, the Canadian application may itself claim priority from an earlier foreign application. In such cases, it would be unnecessary to delay examination further than six months from the filing date of the earlier application, since all corresponding foreign applications would have to be filed within six months from the earlier application.
Nevertheless, the Office previously applied the same delay of six months from the filing date of the Canadian application in examinations indiscriminately, regardless of whether priority from an earlier application was claimed.
With the new practice in place, the applicant can now voluntarily submit a certified copy of the priority application in order to have the examination start six months from the date of priority rather than the date of filing.
What this means for you:
Depending on when the priority application was filed relative to the Canadian application, Applicants can now expect to receive a first examination report much faster than in the past and, consequently, to obtain registration of the design earlier.
On the other hand, the applicant will still have the option of having the originality assessment be performed no earlier than six months from the filing date of the application in Canada by abstaining from filing the certified priority documents.
5) NEW “NOTICES OF POSSIBLE REFUSAL” REPLACING “FINAL REPORTS”
The Office will now issue a “Notice of Possible Refusal” instead of a “Final Report” when the applicant fails to overcome the examiner’s objections. The applicant will have three months from the date of the Notice to request a review of the case by the Patent Appeal Board; if this request is not made within the prescribed time limit, the Office will issue a formal refusal of the application.
What this means for you:
This change will clarify the status of the applications facing final rejections from the Office, both for the benefit of the public and to bring Canadian legislation in line with the Geneva Act of the Hague Agreement to which Canada is in the process of adhering.
The introduction of this new practice will also have some practical implications on prosecution. Under the old practice, the applicant had four months to respond to the Final Report and/or to request review of the case by the Patent Appeal Board. After this deadline had passed, the application was considered abandoned but could be reinstated within six months from the deadline. This practice effectively created an informal six-month extension to the deadline.
With the new practice, not only is the time limit to request a review by the Patent Appeal Board shortened, but it is no longer possible to extend this time limit by letting the application become abandoned to be later revived.
6) DELAYING REGISTRATION OF AN INDUSTRIAL DESIGN
Since the Office does not issue an Notice of Allowance when a design application is accepted and that the Office does not charge any fee upon registration of a design, the status of a design application in Canada could be upgraded from “pending” to “registered” overnight. This would unexpectedly prevent the applicant from further filing divisional applications, which can only be done while the original application is still pending. Moreover, corresponding applications could be refused in other countries in which national legislation prevents registration of a design which has already been registered in another country.
To prevent this situation, the Canadian industrial design rules allow the applicant to request that the registration be delayed for a certain period of time. At any time before registration of a design, the applicant can submit a written request and pay the prescribed fee to have registration be delayed for a six-month period. This delay can be renewed an unlimited number of times by submitting another request and paying the prescribed fee again before the expiration of the current delay period.
Under the old practice, the delay period ran from the date of receipt of the request and the accompanying fee. Now, the delay period starts from the latest of (1) the date of allowance of the application, (2) the expiration date of a previous delay of registration, if any, or (3) the date the request was received.
Therefore, when a request for delay of registration is submitted and accepted, the Office will now issue a letter informing the applicant that the application has been allowed. This letter will include the date of allowance of the application, a confirmation of the start of the delay and the earliest date of registration once the delay expires.
The Office has also discontinued the practice by which an applicant could, without charge, request a two-month delay of registration beginning on the date of receipt of the request when replying to an Examiner’s Report.
What this means for you:
With this new procedure, the Office has introduced the practice of issuing a Notice of Allowance prior to registration of the design, as is done in other countries, but only if the applicant request the delay in registration. If no delay is requested, the Office will continue to take allowable applications straight to registration without any advance warning to the applicant.
Previously, the request to delay registration would have had to be filed during prosecution of the application and the delay period would therefore have overlapped part of the prosecution. To maximize the effective length of the delay following the allowance of the application, the applicant had to carefully time the submission of the request: if the request was submitted too early, the application would get registered earlier than desired, unless the applicant incurred additional costs to procure additional delays; on the other hand, if the request was submitted too late, then the applicant ran the risk of seeing the design be registered before the request could be processed.
Now, the delay will only begin at the end of the prosecution, regardless of its length. Therefore, the request can now be submitted as early as desired without affecting the end of the delay period on which the design will be registered. This will effectively provide a longer delay for the applicant.
If the purpose for requesting a delay of registration is to keep the design secret for a certain period of time, then the applicant would benefit from filing the request and paying the prescribed fee as soon as the application is filed. Otherwise, the applicant would probably want to wait for a first Examiner’s Report to be issued to determine if the filing of divisional applications is required and if additional time is needed for the preparation and filing of these divisional applications. Waiting any longer than this to file a request for a delay of registration is risky, since the design is normally registered the day following the allowance of the application.
Since the publication of this practice notice, many were left wondering how it would affect current ongoing delays which had been granted before the new practice came into force. Unfortunately, the Office confirmed that to benefit from the new practice, a new request for delay of registration will have to be filed. On the other hand, the Office will still grant a two-month delay of registration upon request in response to an Examiner’s Report issued before the coming into force of the new practice, even if the response is due after January 16, 2017.
Rather than pay the fee for requesting a delay of registration after responding to an Examiner’s Report, the applicant may want to consider requesting a six-month extension of time to submit a response, which is granted automatically and free of charge.
CONCLUSION
With the introduction of these changes in various areas of the practice, the Office appears to be paving the way for the more substantial set of amendments to the Industrial Design Act and Industrial Design Regulations which will allow Canada to formally join the Hague Agreement. These amendments were initially set to be introduced in 2016, but are now slated for implementation in 2017-2018, although further delays remain possible. The amendments range from an extension of the registration term to the possibility of including multiple designs in a single application.
Even for applications filed as national applications rather than through the Hague System, the present changes are welcomed by both Canadian and international applicants and practitioners as they bring Canadian legislation on industrial designs one step closer to complete harmonization with the rest of the world. Registering a design in Canada is now easier, faster, more affordable and more accessible than ever before.
For further information on Fasken’s industrial design prosecution practice, please visit our website. If you have any questions on how these updates may affect your current or future intellectual property rights, please contact the author, or another member of our intellectual property group.