Industrial Design Practice Committee (IDPC)

Record of discussion

Date: January 23, 2020

Co-Chairs:
Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
Curtis Behmann, Intellectual Property Institute of Canada (IPIC)

Opening remarks

The Co-Chairs welcomed participants and conducted a round table to introduce participants.

Update from CIPO

Overview of the latest developments at the Trademarks and Industrial Designs Branch

CIPO debuted the meeting by informing IPIC members of the merger between the Trademarks Branch and the Copyright and Industrial Designs Branch. This merger will create operational efficiencies which will enable CIPO to continue to improve examination quality, turnaround times, work tools and to modernize its services. This change will better position CIPO to be an intellectual property office of the future and will support its goal of providing a modern, efficient and accessible IP system that supports innovation in Canada.

CIPO remains focused on improving. Among other things, CIPO will be:

• Continuing its recruitment campaign, which led to the hiring of two new industrial design (ID) examiners in October 2019, with more expected on a quarterly basis;
• Introducing new work tools in an effort to increase quality and timeliness; and,
• Increasing the current quality target in examination, going from 85% to 90%, with a final target of 98%.

Office performance

On November 5, 2018, Canada acceded to the Hague Agreement (the Hague System) and implemented changes to significantly modernize the ID regime. Accordingly, the following fiscal year 2019-2020 was a big year for ID. CIPO received 6,808 ID applications (5,494 national filings and 1,314 Hague filings) which represent a two percent increase from last year for total applications filed. Given that Hague filings account for 19 % of new applications, a displacement from national to Hague filings can be observed. Generally, applicants from the United-States appear to prefer filing directly with CIPO while applicants from the European Union appear to favour filing through the Hague System.

CIPO indicated that it currently examines files that are 10 months old but that turnaround time is expected to spike up to 12.4 months this year. CIPO stressed that this will not be the norm and that new resources and tools will help address this issue so that turnaround time should come down to approximately 9 months in 2021-2022.

Going back to the topic of Hague Applications, IPIC members expressed that they would like to obtain a copy a Notification of Refusal (and Statement of Grant of Protection) should they be appointed as agent on the file with respect to Canada.

Action items:

• Provide statistical information to IDPC (In progress);
• Establish, if possible, a mechanism whereby a courtesy copy of the Statement of Grant of Protection or Notification of Refusal is sent to the appointed agent, in addition to the International Bureau (In progress, tentative release early June 2020).

Lessons learned: one year after coming into force

CIPO shared a few lessons learned with IPIC members. First, with respect to a Hague Application, CIPO wanted to stress that the appointment of a representative before the International Bureau does not mean an agent has been appointed before CIPO. To be appointed before CIPO, a notice of appointment must be submitted directly to the Office. This notice may only be submitted once the international application is registered and communicated to CIPO.

Second, agents are invited to keep in mind that section 20 of the former Industrial Design Act (the former Act) on clerical errors has been repealed and that corrections to registrations under section 3.1 of the current Industrial Design Act (the Act) must be made within 6 months from the date of registration of the design. On the topic of corrections, IPIC brought up the fact that it is not obvious to see what information has changed on a corrected certificate or notice of registration and that they would appreciate if CIPO could re-send the complete registration package or otherwise clearly indicate the change that was made.

Third, the declaration required under paragraph 4(1)(b) of the former Act is no longer required but is still included in applications. CIPO pointed-out that an objection will be issued should a statement or description include a declaration to that effect. Nevertheless, where an application is a divisional of an application filed before November 5, 2018, a declaration is still required and may be included in a cover letter or in the description of the design.

Fourth, some international registrations designating Canada contain a description or statement similar to a claim as required by the United-States: "The ornamental design for [the article] as shown". CIPO would like to remind agents that using this language may result in an objection because it creates confusion as to the scope of the design.

Finally, CIPO would like to remind agents about the existence of section 31 of the Industrial Design Regulations (the Regulations) which provides for an exception to self-collision provided that the second design is filed within a year from the first one.

Action item:  

• Improve corrected certificates or notices of registration or re-send the complete registration package in the event of a correction to a registration (Pending).

Proposed changes to existing practices Representative for Service

Under the previous ID regime, foreign applicants were required to provide the name and address of a representative for service in Canada. This information is no longer required, regardless of the filing date of the application concerned. Accordingly, it cannot be provided for new applications. For designs registered under the former regime, the existing information on representative for service remains available on the ID online database, but can no longer be removed or modified.

CIPO indicated that it would like to modify the current practice and was seeking IPIC's preliminary views on this matter. There are a few reasons behind the proposed change. Evidently, CIPO receives frequent requests to change or update information pertaining to the representative for service. Unfortunately, technical restrictions make it so that this information can only be modified through a manual workaround which means that outdated information may remain available to the public on ID database if modifications cannot be made in a timely manner.

Given that a representative for service is no longer necessary, CIPO was proposing to delete this information altogether from the database. This would:

• Eliminate outdated information;
• Reduce the risk of documents being served at the wrong address; and,
• Reduce administrative burden on the agent community and CIPO, who would no longer have to update and maintain the accuracy of information that is otherwise not required.

Feedback from IPIC members on the proposed change appeared to be divergent. While some members were in agreement, others pointed-out that there is an important distinction between being appointed for the purpose of the prosecution of an application versus for the purpose of the service of documents, which should be further explored before any changes are made.

IPIC expressed interest in getting data on whether the person or firm named as representative for service was different than the appointed agent. CIPO agreed to provide this information and draft a discussion paper to obtain further feedback from the IDPC.

Review of examiner decisions by the Patent Appeal Board

Currently, following a Notice of Possible Refusal, applicants may request a review of the examiner's decision by the Patent Appeal Board (the PAB). CIPO would like to modify the current practice and was seeking IPIC's preliminary views on this matter. There are a few reasons driving the proposed change, namely:

• The fact that the PAB is a specialized board composed of patent experts;
• ID decisions represents a marginal part of their workload and timeliness can be a consideration;
• Given the recent changes made to the regime, extensive training would now be required for the PAB members.

Accordingly, CIPO felt it may be preferable to entrust the review of examiner decisions to subject matter experts from the Policy and Legislation group. These experts would make a recommendation to the Director General, who in turn would refuse registration or remand the design to examination.

Feedback from IPIC members appeared divergent. CIPO continues to study how best to proceed while maintaining the quality of the decisions and improving timeliness. IPIC pointed-out that since applications are now published after 30 months from filing regardless of whether or not the design is registered, a faster review process would be beneficial. IPIC members further stressed the importance of having the review conducted by a person without any previous involvement in the case. CIPO agreed to take those items under consideration and draft a discussion paper to obtain further feedback from the IDPC.

Action items:  

• CIPO to prepare a discussion paper on the removal of information about the representative for service from the ID database (In progress) and a discussion paper on the review of ID examiner decisions (On hold), which will be shared with IDPC later this spring.

Update on e-services

E-Amendment

CIPO indicated that today, January 23, it launched a new E-Amendment functionality which provides a secure mechanism to file amendments electronically. The new service has various features, including the possibility to make changes to design information, priority information, and to reinstate an abandoned application. An information e-mail about the new service was sent on January 20 and webinars on how to use the E-Amendment functionality, which were scheduled for January 27, were welcomed by the participants and well attended.

E-Mailbox and other information technology topics

IPIC members had previously shared with CIPO various questions and issues with respect to e-services, such as:

• Difficulty retrieving documents on the E-Mailbox service;
• Necessity to establish a single point of contact for issues with respect to e-services;
• Issues with various correspondences;
• Absence of a single sign-on for all e-services.

A detailed list of the questions and issues can be found, along with responses and relevant actions items, in annex to this document.

Action items:

• CIPO to create and provide an e-mail address where questions or issues with respect to e-services may be sent: ic.industrialdesignitinquiries-demandestidesdessinsindustriels.ic@canada.ca (Completed on March 13, 2020);
• CIPO to distribute branch contact information (In progress);
• CIPO to ensure the Notice of Filing is available on the E-Mailbox service (Completed on February 4, 2020).

Examination

Participants discussed various questions that were brought up by IPIC members in advance of the meeting, including:

• Calculation of the reinstatement due date;
• Language found in Office actions with unity objections;
• Drawing techniques applicable to applications filed under the former Act;
• Recording a transfer of applicant executed after the filing date of the application;
• Notices and certificates of registration.

A detailed list of the questions and responses can be found in the table in annex to this document.

Conclusion

The Co-Chairs went over the various action items and CIPO added that release notes will be shared with IDPC when a system fix or change that would correct an ongoing issue is released.

Before concluding, IPIC members brought up a few items in relation to the Registration Package, the online shopping cart, and CIPO's customer service acknowledgment of receipt e-mail, which are also outlined in the table in annex to this document.

Throughout the discussion, participants have raised various questions and issues which can be found, along with responses and relevant actions items, in a table in annex to this document.

Action item:

• Share system release notes with IDPC members (In progress).

Annex: Questions, issues and responses table