May 2, 2017
On January 16, 2017, CIPO announced six changes to its Industrial Design Office (the Office) practices with the objectives of improving service to clients, reducing administrative burden, and modernizing our practices to align with international norms. The changes were based largely on feedback from the Industrial Design Practice Committee (IDPC). After the January announcement, we reconvened with the IDPC to hear how the changes were being received and to seek additional input and feedback. The Office is pleased to provide additional guidance on how we will be applying the changes; we have also updated the Practice notice: Colour as a registrable feature of an industrial design, to clarify requirements.
Please contact us if you have questions about these changes or other Office practices.
In this document
- Computer-generated animated designs
- Colour as a registrable feature of an industrial design
- Reducing time limits to respond to office actions
- Search to assess originality where there is a priority claim
- New notices of possible refusal
- Delaying the registration of an application
The Canadian Intellectual Property Office (CIPO) is pleased to announce changes to six industrial design office practices.
These changes will improve service to clients, reduce administrative burden, and modernize our practices to align with international norms. CIPO is committed to maintaining its strong relationship with clients and stakeholders. The changes outlined below are based largely on stakeholder feedback from the Industrial Design Practice Committee.
The following is a brief summary of the practice changes that affect pending and future industrial design applications.
Computer-generated animated designs
- Recognize that a computer-generated animated industrial design is registrable subject matter.
- The previous practice was to examine the different states of computer-generated animated designs as either distinct designs or variants. Under the new practice, the Industrial Design Office will consider computer-generated animated designs as one design. Drawings for a design will be viewed as a sequence of frames. Applicants may petition the Office to re-examine any pending application in light of this new practice.
- This practice modernizes Canada's industrial design framework by keeping pace with international norms and new technologies.
Guidance for applicants:
Applications filed before January 16, 2017
As a courtesy to applicants, the Office will make every attempt to hold back from registration for a period of two months from May 1, 2017, pending applications filed before January 16, 2017 that claim computer-generated animated designs. However, since the Office is unable to identify every application for which the intent was to seek protection for a computer-generated animated design, applicants are asked to advise the Office of applications that should be held back from registration for this reason.
Within this two month period, applicants must petition the Office in writing to have their pending applications re-examined according to the new practice. Conversely, an applicant may confirm their intent to proceed without delay. Applicants who submitted divisional applications in response to a multiple design objection may amend the parent application to re-integrate designs that were the subject of divisional applications. Applicants must withdraw these divisional applications when the designs have been reintegrated into the parent application.
Following the expiry of the two-month grace period, all pending applications for which no request for re-examination has been received will be prosecuted as per the practice prior to January 16, 2017.
Colour as a registrable feature of an industrial design
- Recognize that colour may form part of an industrial design.
- The previous practice did not recognize colour as registrable industrial design subject matter. Under the new practice, the Office will recognize colour as forming part of a combination of features of an industrial design.
- This practice modernizes Canada's industrial design framework by keeping pace with international norms.
Guidance for applicants:
Applications filed before January 16, 2017
As a courtesy to applicants, the Office will make every attempt to hold back from registration for a period of two months from May 1, 2017, pending applications filed before January 16, 2017 that claim colour. However, since the Office is unable to identify every application for which the intent was to include colour as a registrable feature, applicants are asked to advise the Office of applications that should be held back from registration.
Within this two month period, applicants must petition the Office in writing to have their pending applications re-examined according to the new practice. Conversely, an applicant may confirm their intent to proceed without delay. Descriptions and drawings/photographs may require amendments according to the format described below.
Following the expiry of the two-month grace period, all pending applications for which no request for re-examination has been received, will be prosecuted as per the practice prior to January 16, 2017.
Application requirements to adequately claim colour
As stated in the practice notice on colour, the Office considers colour as a feature of ornament or pattern. If an applicant wishes to claim colour, the applicant must ensure that "ornament" and/or "pattern" is included as a feature of the design in the description portion of the application. (Please see Table 1, examples 1 and 2)
Drawings or photographs must be filed in colour and on paper rather than electronically since the electronic submission process will convert all colour images to black and white. Applicants may provide the Office with a second set of colour images to be sent back with a registration certificate to ensure that drawings and photographs in the registration package are the same as those on file in the Office. This additional set of drawings or photograph will not be considered as additional "pages of drawings in excess of 10 pages" under item 1(b) of the Tariff of Fees.
How to address colour in the description
The Office considers that colour may describe features of ornament or pattern. Reference to colour in the description must be clear and unambiguous. For example, the adjective "blue" is acceptable; "blue-ish" is not. Alternately, widely-recognized colour systems may be used to describe the colours claimed. In this case, applicants must include a description of the colour and refer to the applicable colour system.
While the Office does not endorse or recommend a particular colour identification system, any system used should be easy to identify and be reproduced by the general public. If the colour system is the subject of a registered trade-mark, it must be identified using uppercase letters and must include the statement that it is a registered trade-mark. (Please see the example)
Applicants must limit colour to claimed portions of the finished article
As stated in paragraph 6.5.2 of the Industrial Design Office Practices Manual, it is unacceptable to show shading and transparency in the non-design portions of an article that have been defined by stippled lines. The Office will apply the same principle for colour shown in non-design portions of an article and will issue an objection if colour is included in non-design portions.
The following examples illustrate possible colour claims and how they will be interpreted by the Office.
Table 1 – Examples of how the Office interprets colour claims
Table 1 – Examples of how the Office interprets colour claims Example Application Description Drawings Office Interpretation 1 "The design consists of the shape and ornament of the entire [identify the finished article] as shown in the drawings. The blue colour shown in the drawings is PANTONE 2126C. *PANTONE is a registered trade-mark." Drawings have been filed in colour and on paper. The description refers to "ornament" which can include colour and the drawings are in colour, therefore, the Office will consider colour as a part of the design. 2 "The design consists of the visual features of the [identify the finished article] as shown in the drawings." Drawings have been filed in colour and on paper. This combination of description and drawings is acceptable. The Office will consider colour as part of the design because drawings have been filed in colour and it is implied from the description (by referring to "visual features") that features of ornament and/or pattern are claimed. 3 "The design is the shape of the entire [identify the finished article] as shown in the drawings." Drawings have been filed in colour and on paper. Colour will not be considered as part of the design because the description has limited the design to the feature of shape. In order to claim colour, the description should also refer to features of ornament and/or pattern. 4 "The design consists of the visual features of the [identify the finished article] as shown in the drawings. Colour forms part of the design." Drawings have been filed in black and white on paper. The Office will issue an objection because the description and drawings are inconsistent. The description refers to colour but colour is not reflected in the drawings. The applicant would need to amend the drawings to include colour, or amend the description to remove the reference to colour. 5 "The design consists of the features of shape and ornament of the [finished article] as shown in the drawings. Colour does not form part of the design." Drawings have been filed in colour and on paper. Even though the drawings are in colour and features of ornament are claimed, colour has been disclaimed in the description. As such, the drawings will be published in colour but the Office will not consider colour as part of the design.
Recognizing that technical issues may impact image quality when viewing or printing from the online database, users are advised to consult the physical file as it contains the best representation of the design. This may be especially useful for viewing designs that include colour as a registrable feature.
Reducing time limits to respond to office actions
- Reduce client-driven pendency to improve Office efficiency and align with international standards for responding to reports.
- Previously, the deadline for applicants to respond to an examiner's report was four months, but now that deadline is three months.
- This change will lead to a timelier issuance of industrial design rights.
Search to assess originality where there is a priority claim
- Reduce turnaround time for examination.
- The previous practice was to initiate the search for prior art at six months from the filing date of the application. Under the new practice, the Office will conduct the prior art search as early as six months from the date of priority when an applicant voluntarily submits certified priority documents that support the priority claim.
- This change provides applicants with the potential for an earlier examination and a timelier registration of their application.
Guidance for applicants:
A certified copy of the foreign application and a certificate from the foreign office showing the filing date of the application can be submitted to the Office as long as they are accompanied by a translation of the documents into English or French.
A supported priority claim
The design disclosed in the priority document must be for the same design as the design the applicant is seeking to register in Canada. Drawing techniques will not have an impact on the assessment of whether or not the design is considered to be the same (e.g. a bold wavy boundary line used to delineate between the design and non-design portions). If your application contains variants, each of them must be adequately supported. If a variant is not supported, the search will be conducted no earlier than six months after the Canadian filing date.
New notices of possible refusal
- Improve conformity with the Industrial Design Act, which states that the Minister may refuse an application that does not meet the criteria for registration.
- Previous practice was to issue objections to registration and if no response was received, an application would be abandoned. After six months, the abandoned application would become inactive. Under the new practice, the Office will issue a notice of possible refusal informing an applicant that the Minister may refuse the industrial design application as it does not meet the requirements for registration.
- This will provide certainty in the marketplace regarding the status of applications.
Guidance for applicants:
Advance notice of an impending Notice of Possible Refusal (NPR)
The Office will inform the applicant that a NPR is forthcoming in a report where an objection to registration is maintained. This report will also specify that unless the objection is overcome, a NPR will be issued.
Options available to the applicant after receiving a NPR
The NPR will inform applicants of two possible options; any action must be taken within three months from the date of the notice.
- Request a review by the Patent Appeal Board (PAB): Applicants may request that the Office submit their application for review by the PAB. The Office will forward the application to the PAB which will in turn contact the applicant.
- No action: Applicants may decide to take no further action. In this case, the Director of the Office will review the application to either issue the registration or a refusal. A refusal will terminate the examination of the application. If the applicant is not in agreement with the refusal, an appeal to the Federal Court may be available.
Delaying the registration of an application
- Increase the certainty and potential benefits of a delay of registration.
- Previously, the practice was to start the delay on the date when the request for a delay of registration was received by the Office. Under the new practice, the Office will grant a delay of registration of up to six months from the date of allowance. The Office will confirm this registration date in a letter issued to the applicant or their agent.
- This change provides clarity to applicants as to when the requested delay of registration starts and also allows them to benefit from an optimal delay period.
Guidance for applicants:
How to request a delay of registration
An applicant may request a delay of registration any time prior to registration. The Office requires a written request accompanied by the required fee (Item 9 of the Tariff of Fees) to process the request.
Registration can be delayed for up to six months per request; the Office does not limit the number of delays that can be applied to an application. A shorter delay period may be specified, as long as it is in monthly increments. Should a delay no longer be required or the delay period inadequate, a written request to cancel or modify the delay may be submitted to the Office.
Request for delay of registration received prior to January 16, 2017
Under the previous practice, a delay of registration began on the date the request was received in the Office. Therefore, if a delay of registration was filed prior to January 16, 2017, it has already commenced.
Applicants who wish to benefit from the practice introduced on January 16, 2017, may petition the Office in writing to have an already-active delay of registration come into effect on the date of allowance of the application, rather than on the date the request was received. No additional fees will apply.
Using delay of registration when filing divisional applications
Applicants are required to notify the Office when an application is being filed as a divisional of another application (commonly known as the “parent”). As indicated in the Practice notice: Delaying registration of an industrial design, the Office will no longer hold back from registration parent applications to allow applicants to file divisionals. Instead, applicants are encouraged to file their divisional applications at the same time they restrict the parent application to one design. Should the applicant require more time to file divisional applications, the applicant may request a delay of registration on the parent application.
Effect of a delay of registration on associated applications
When applicants request that related designs be registered on the same day or when they submit parent and divisional applications, the Office will associate the appropriate applications so that they all register on the same day.
Consequently, when a delay of registration is requested for a particular application that is associated with other applications, those other applications may also be delayed as a result.
For example, if a delay of registration is requested on application “A” which is associated with other applications, application A will hold back from registration all associated applications until the delay of registration expires. At that time, all associated applications will proceed to registration on the same day if they are all in an allowable state. Please note that if an application that has been delayed from registering is disassociated from a group of applications, only the application to which the delay was applied will be held back from registration. The others will proceed to registration if they are in an allowable state.
More than one design report issued prior to January 16, 2017
If an application contains more than one design at the time of filing, an examiner’s report is issued informing the applicant that the application must be limited to one design and that any other designs may be submitted in divisional applications. Such a report issued prior to January 16, 2017, would have indicated that in order for the applicant to file divisionals, the application would be held back from registration for a period of two months, should it be in an allowable state. Since the practice of holding back the registration of an allowed parent application has been discontinued, the Office has implemented an interim measure for affected applications. The Office will send a courtesy letter which will outline the change in practice and will inform applicants that they have two months from the date of issuance of the letter to file divisional applications, or to request a delay.
If no divisionals are filed within this period, a parent application in an allowable state will proceed to registration. Consequently, it will no longer be possible for the applicant to file divisional applications. Should an applicant require more time to file divisional applications, they may request a delay of registration.
More than one design report issued after January 16, 2017
The Office will, in an examiner’s report, remind applicants that they must file divisional applications before the parent application proceeds to registration. The Office will also highlight the recent change in practice and suggest that any divisional applications be filed at the same time as amendments to the parent application. The report will also indicate that should the applicant require more time to file divisional applications, a delay of registration may be requested for a delay of up to six months from the date of allowance of the parent.