July 1, 2017, is Canada’s 150th birthday. But it is also the deadline for taking certain actions in respect of pending Canadian design applications.
As previously reported, on January 16, 2017, the Canadian Industrial Design Office altered its treatment of design applications in a number of areas.
In response to consultations with members of the profession, including Smart & Biggar’s Industrial Design Practice Group, the Design Office has now clarified certain procedural aspects by releasing additional guidance.
Among other provisions, this guidance outlines how applicants can have certain new practices, such as those related to colour and animated designs, applied to pending applications filed before the new practices came into effect on January 16, 2017. As explained in the following, certain actions must be taken by July 1, 2017 in order to allow eligible legacy applications to take advantage of the new provisions.
Colour
Colour, in combination with other features, may now form part of a claimed design in Canada.
The Design Office will attempt to identify pending applications filed before January 16, 2017, that claim colour and will hold these applications back from registration until July 1, 2017. Within this period, applicants can petition the 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 who do not want their applications to be held back for this reason can simply ask the Office to proceed without delay.
That said, the Design Office is unable to 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 so as to advise the Design Office accordingly by July 1, 2017.
Animated Designs
Frames of an animated design are now considered as a sequence, rather than separate, individual designs. The frames no longer need to be substantially similar in order to remain together in one application.
The Design Office will attempt to identify pending applications filed before January 16, 2017, that claim an animated design and will hold the applications back from registration until July 1, 2017. Within this period, applicants can petition the Office to have the pending application re-examined according to the new practice.
In that case, applicants who had already filed one or more divisional applications because of how animated designs were previously being 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 who do not want their applications to be held back for this reason can simply ask the Office to proceed without delay.
Again, because the Design Office is unable to identify every application that claims an animated design, applicants with pending applications filed before January 16, 2017, where an animated design is being claimed and who wish to have their applications examined under the new practice, should advise the Design Office accordingly by July 1, 2017.
Delays of Registration
Delays 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 would have begun 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 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.
Conclusion
We have highlighted the above-noted items as they may require prompt action on behalf of applicants in order to take advantage of new provisions in the case of older applications already primed for this change. The Design Office has also released guidance on a number of other points that will aid implementation of its new practices. For more information, please contact a member of our Industrial Design Practice Group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.