July 20, 2017
By H. Samuel Frost, James Raakman, Ken Bousfield, Kevin Shipley, Matthew Graff, Robert Storey, Stephen Beney, and Tony Orsi
As we first reported on June 20, 2017, the Canadian Intellectual Property Office (CIPO) has recently published proposed new Industrial Design Regulations. The Regulations are intended to implement and complement amendments to the Industrial Design Act that were passed by the Government of Canada in 2014 and which are expected to come into force next year. The amendments will enable Canada to accede to the Hague Agreement which provides a system for filing international design applications designating any of over 60 member countries.
The new Regulations have specific provisions that apply only to international applications that designate Canada, and other general provisions that apply to both Hague applications and national applications. This two part article will examine only the general provisions; the Hague related provisions will be reviewed subsequently.
One of the most welcome aspects of the new Industrial Design Act is an overhaul of the novelty requirements, which are currently confusing and difficult to apply. The new Act establishes a novelty requirement that is analogous to what is required for a patentable invention in Canada.
An application to register a design will meet the new novelty requirement if neither the same design nor a design not differing substantially from it has been publicly disclosed by the applicant or a predecessor, or a person who derived knowledge of the design from either, more than 12 months before the filing date or priority date of the application, and has also not been publicly disclosed by any other person before the filing date or priority date, and is as well not disclosed in another Canadian design application with an earlier filing date or priority date.
The proposed new Regulations will add the limitation that disclosure in an earlier Canadian design application does not destroy novelty if the earlier application was filed within 12 months by the same applicant or a predecessor in title. This is intended to prevent so-called “self-collision” by an applicant who files applications for similar designs on different dates. However, it also appears to allow an applicant to file two applications for the same design and potentially obtain two registrations that together would extend the term of protection beyond the maximum contemplated by the new Act.
As noted, the new Act defines novelty based on disclosure of “the same design, or a design not differing substantially from it”. It also indicates that such a design destroys novelty only if it is applied to the same finished article or an “analogous” finished article. Unfortunately, neither the new Act nor the proposed new Regulations provide any objective criteria for assessing whether a previously disclosed design does or does not “differ substantially” from the design in an application, or whether a previous design was applied to an article that is “analogous” to the article identified in the application.
As is currently the case, the proposed new Regulations will require that priority be claimed within six months of the earliest Convention filing date. The new Regulations will add the requirement that priority also be claimed before the date of registration of the design, and set out comprehensive provisions governing the submission of a certified copy of the priority application, translations, and so forth.
For Hague applications, an applicant will be deemed to have made a request for priority, and there will be no requirement to provide a certified copy of the priority application.
An application must be limited to “one design applied to a single finished article or set or variants applied to a single finished article or set”. Current CIPO practice is to construe the concept of a “variant” narrowly, which leads to frequent objections raising restriction requirements.
The new Regulations will recognize “chains” of divisional applications, and require that a design in a divisional application have been disclosed in the earliest original application in the chain of applications from which the divisional application results.
The new Regulations also stipulate that any divisional application must be filed no later than one year after the filing date of the earliest original application in the chain, except for divisional applications prompted by an Office restriction requirement. (In some cases, this could permit filing of a divisional application after registration of a parent application.) If a restriction requirement has been issued, the applicant will have six months after responding to file a divisional application, providing that the original application is still pending.
The new Act requires that an application must have a “representation” of the design as prescribed by the Regulations. The proposed new Regulations set out that the representation be “sufficient to disclose fully the design”, and must be in the form of one or more photographs, or “graphic reproductions”, or “any other visual reproduction” approved by CIPO and set out on its website.
The current Regulations stipulate that the drawings or photographs must show the article in isolation; however, where there are multiple views, one view may show environment in stippled lines. In contrast, the proposed new Regulations set out that the representation must “include at least one photograph or reproduction that shows the design in isolation or the finished article in isolation”, which implies that environment could be shown in multiple views as long as there is one view with no environment.
In contrast to the current Regulations, the proposed new Regulations provide no technical details regarding the quality of the representations. Presumably, CIPO will stipulate standards in practice notices.
A written description is currently required in all Canadian design applications; however, written descriptions will become optional under the new regime.
Significantly, the proposed Regulations will establish a presumption that “an application is deemed to relate to all of the features of shape, configuration, pattern or ornament shown in the representation of the design". However, where the representation includes features shown in broken or dotted lines, they will be presumed not to be part of the design. Both of these presumptions can be overcome by an appropriate written statement. Applicants will likely continue to use descriptions and statements and stippled lines in drawings to try to obtain a scope of protection that may be somewhat flexible, while CIPO will likely continue to resist such tactics.
The new Regulations indicate that any properly filed Hague application will be deemed to comply with the new application requirements.
At present, applications to register a design in Canada are kept confidential unless and until the design is registered.
The new Regulations specify that national applications will be made available to the public if the application is still pending 30 months after the filing date or priority date. (A priority claim can be withdrawn up to 28 months from the priority date to delay publication.) Hague applications and divisional applications resulting from Hague applications will be made available to the public as of the date of publication of the international registration.
If you have any questions, please do not hesitate to contact any member of our design law review team: Robert Storey, Sam Frost, Stephen Beney, Ken Bousfield, James Raakman, Tony Orsi, Matt Graff and Kevin Shipley.
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