Monday, February 8, 2016
Chair: Stephen J. Perry, Perry + Currier Inc. /Currier + Kao LLP (via teleconference)
Vice-President: Clark Holden, Osler, Hoskin & Harcourt LLP
Attendees
CIPO
- Mesmin Pierre, Director Copyright and Industrial Design Branch (CID)
- Lynne Pelletier, Manager Business Operations, CID
- Brittany Stief, Manager, Legislation and Practices, CID
- Micheline Vincent, Project Manager of IT Projects, CID
- Maxime Villemaire, Policy Analyst, CID
- Stefan Wesche, Policy Analyst, CID
- Carla Giannetti, Team Leader, CID
- David Benovoy, Team Leader, CID
- Julie MacDonald, Examiner, CID
- Selin Papazian, Examiner, CID
- Stéphanie Houle, Examiner, CID
- Michael Ryan, Legal Counsel, CID
- Alan Troicuk, Senior Legal Counsel, CIPO
IPIC
- Stephen M. Beney, Bereskin & Parr LLP (in person)
- Thomas W. Bailey, Oyen Wiggs Green & Mutala LLP (in person)
- Joseph Conneely, Gowling Lafleur Henderson LLP (in person)
- Christine N. Genge, Smart & Biggar/Fetherstonhaugh (in person)
- Jean-Charles Grégoire, Marks & Clerk LLP (in person)
- Jennifer Jannuska, Deeth Williams Wall LLP (in person)
- Kimberley Ann Lachaine, Kirby Eades Gale Baker (in person)
- James E. Longwell, Gowling Lafleur Henderson LLP (in person)
- Sumiko Mori, Gowling Lafleur Henderson LLP (in person)
- Alain Provost, ROBIC, LLP / S.E.N.C.R.L. (in person)
- Taiji Yoshino, Nelligan O’Brien Payne (in person)
- Johanna Coutts, Cassan Maclean (via teleconference)
- Mark B. Eisen, Mark B. Eisen Professional Corporation (via teleconference)
- Olivier Provost-Cao, Fasken Martineau DuMoulin LLP (via teleconference)
- Kenneth L. Bousfield, Bereskin & Parr LLP (via teleconference)
- Amelia Choi, Choi Tech and Law Professional Corporation (via teleconference)
Regrets
- Curtis Behmann, Borden Ladner Gervais LLP
- Anil Bhole, Anil Bhole Professional Corporation
- Henry (Ning) Bian
- Kent Fincham, Guest-tek Interactive Entertainment Ltd.
- Peter R. Everitt, Ridout & Maybee LLP
- H. Samuel Frost, Bereskin & Parr LLP
- James E. Gastle, Gastle and Associates
- Richard A. Johnson, Borden Ladner Gervais LLP
- Jean Lee, Ledgley Law
- Kieran Moore, Lululemon Athletica Inc.
- David A. Ruston, Sim & McBurney/Sim Ashton & McKay LLP
- Michel Sofia, Benoît & Côté, Inc.
- Laura Thompson, Arual Trademark Services
- Katie Wang, Shapiro Cohen LLP
- Vincent Kam Sun Yip, McCarthy Tetrault LLP
- Sean Xiao-He Zhang, Dale & Lessmann LLP
Welcome and Introductory Remarks
10:00 am : M. Pierre welcomed the group, and all participants introduced themselves.
Agenda Item #1:Office Practices
1. Reduction in response time to office reports. (CID)
The Office plans to reduce the response time to office actions from 4 to 3 months. This practice change was discussed, and some members expressed concern while others indicated general support provided that extension of time practices remain in place. The Office responded that the intent is to maintain time extension practices.
The Office will implement this practice change in early spring 2016/17; a Practice Notice will be issued accordingly.
In the event of any inconsistencies between the Practice Notice and the Industrial Design Office Practices, the Practice Notice is to be followed; however, in the event of any inconsistencies between the Practice Notice and the applicable legislation, the legislation must be followed.
2. Clarification of the refusals process. (CID)
The Office plans to issue refusals on applications which are deemed not registrable and where no PAB review is requested.
An examiner’s final report will be replaced by a Notice of Recommendation for Refusal; the applicant will then have 3 months to request a review of their file by the PAB. Should no PAB review be requested, the application will be considered for refusal rather than proceeding to abandonment as per current practice. The refusal will be communicated to the applicant.
IPIC did not raise any objections to this practice change.
3. Status of proposed practice changes previously considered by the JLC (e.g. delay of registration, notice of allowance). (CID/IPIC)
Notice of Allowance
The Office reiterated its decision from a past JLC meeting that no notice of allowance would be provided to applicants at this time. This issue was closed.
Delay of Registration:
The Office advised that IT work is underway to ensure that any delay of registration would begin upon the file’s allowance date, and that the delay period would be 6 months. Subsequent delays would be considered by the Office, and would begin upon the expiry of the previous delay.
Accelerated Examination
The Office advised that no process has yet been put in place for an earlier search in cases where certified priority documents are submitted along with the request for accelerated examination; however, the Office will consider this as part of future practices.
Divisional Applications
The Office advised that examiner reports and the IDOP were updated to clarify that all parent and divisional applications would be registered together. This issue was closed.
Priority Filing
The Office advised that it has addressed the training issue resulting from inconsistencies between the priority filing information found on the filing certificate and in the registration package. This issue was closed.
Electronic Icons/GUIs
The Office indicated that it has started researching this issue and considering potential options for the treatment of electronic icons/GUIs in industrial design applications. IPIC wished to further discuss this item later in this meeting (refer to agenda item #2, policy issues #3).
Agenda Item #2: Policy Issues
1. Status update on the Hague Legislative Project (and seeking feedback on specific topics). (CID)
The Office provided an update on the status of accession to the Geneva Act of the Hague Agreement; specifically, that regulatory policy thinking is advanced and that targeted consultations with IPIC will take place in March. The Office indicated that it anticipated beginning regulatory drafting in April 2016.
The Office requested feedback from IPIC on certain specific topics (related to application format, publication, and communication procedures) under consideration from a regulatory perspective. Practitioners are invited to provide some general feedback in more detail in a meeting which will be conducted in March.
2. Suggestions for regulatory/practice changes resulting from recent amendments to the Industrial Design Act. (IPIC)
IPIC highlighted several points about potential improvements to regulations and practices, including:
- Procedures for deadlines that fall on days when the Office is closed
- Protecting electronic icons and graphical user interfaces in industrial design applications, and clarifying whether scope can change via divisionals or amendments
- Regulating self-collision of industrial design applications
- Accepting colour in industrial design applications
- Accepting environmental views in industrial design applications
The Office indicated that it intends to develop regulations that are more flexible than the current system, and that many of these issues will be resolved through the new regulatory framework.
3. Animated icons/GUIs: How to modernize design subject matter in Canada to provide protection for new classes of design. (IPIC)
IPIC raised concerns that design practice is not keeping pace with innovation, especially in relation to the recent amendments to the Trademarks Act that expand what could be protected to things like scent, sound, etc. IPIC would like to know the feasibility of amending the Industrial Design Regulations to permit protection of GUIs.
The Office indicated that research is underway regarding GUIs in industrial design applications, and proposed that a small working group (3-4 people from each of CID and IPIC) be created to take a look at this issue and propose potential solutions for the short and medium term and based on current and amended legal framework.
4. 3D Printing: impact on industrial design. (CID)
The Office requested feedback form IPIC on the impact of disruptive technologies (e.g. 3D printing) on intellectual property rights, and specifically industrial designs.
IPIC indicated that one of the challenges with 3D printing is that even if a design is registered, it can easily be scanned and copied.
Participants agreed that this issue is worthy of further study.
5. Raising awareness of ID: opportunities to collaborate. (CID)
The Office is interested in collaborating and creating awareness about the benefits of registering an industrial design. The Office presented some statistics about top design filers in Canada, and asked IPIC if they had suggestions about ways to engage with filers, associations, or other groups to raise awareness about design rights. This discussion led to the following topic in the agenda.
6. Engaging Universities (industrial design programs). (CID)
The Office asked for insight and suggestions on how best to engage with universities that offer industrial design programs, since intellectual property protection should be top of mind for designers as they enter their field.
IPIC responded that there is indeed a lack of exposure on the design side, and that it would be useful for the Office to attend trade or design shows (or entrepreneurship events) to give presentations on this topic.
Participants agreed that there is a mutual interest in increased visibility of industrial designs as an IP right.
Agenda Item #3: File Prosecution
1. Cross hatching of non-design portions: request for clear direction from Office. (IPIC)
IPIC advised that some agents were experiencing some inconsistencies last year with regard to examiner reports on cross-hatching non-design portions, and requested clarification on this issue.
The Office has noted the issue and will look into it.
2. Line quality requirements: discuss line quality requirement in Canada as compared to other jurisdictions. (IPIC)
IPIC indicated that the Office continues to have very strict line quality requirements for drawings contained in industrial design applications, and cautioned that this may present a challenge under the Hague System.
The Office indicated that work is underway to look into this issue.
3. Online filing system: challenges and opportunities for improvement. (IPIC)
IPIC highlighted several points about potential improvements to CID’s online filing system, including:
- the reinstatement of the check box for an agent to indicate he/she is also the representative for service
- create an editable document for agents to be able to reuse information from previously-filed applications
- improve the interface’s ability to upload different file types and to upload multiple images at once
- implement a mechanism to pay the assignment fee with the application rather than separately afterward
The Office noted these points and will look into these issues. The Office further noted that we would like to hold a working group to obtain feedback from IPIC members regarding the online services.
4. Computer-generated Images: discuss objections to computer-generated images as being photographs that cannot appear with line drawings. (IPIC)
IPIC raised the issue that agents are receiving objections indicating that computer-generated images are considered as a mix of photographs and line drawings, and thus not permitted.
The Office indicated that upcoming regulatory amendments will indeed be more flexible in regards to acceptable visual representations of a design.
5. Boundary Lines: discuss the possibility of reviewing the visual requirements of boundary lines. (IPIC)
IPIC requested that the boundary line requirement currently in place at CID be reviewed, and the Office indicated that it will look into this issue as part of the overall practice review for Hague accession.
6. File review: discuss possible amendment to the Patent Appeal Board process. (CID)
The Office advised that it will be looking into current process of sending industrial design files for review to the Patent Appeal Board. At this point, no decisions have been made on this issue.
Agenda Item #4: Level of Service
1. Response time: discuss whether there is an ideal turnaround time from filing to allowance and whether this impacts the overall IP strategy for a product? (IPIC)
This topic was not discussed as there was some confusion about why it was on this agenda.
2. Records of Decision: status of access to minutes of past JLC meetings. (IPIC)
IPIC requested that meeting minutes from past JLC meetings be readily accessible online; the Office indicated that they are.
3. Statistics: status of request for CIPO to publish monthly statistics on CIPO website. (IPIC)
IPIC advised that the statistics which used to be sent to them on a monthly basis are no longer being sent, and that the statistics on CIPO’s website are not detailed to the level they would like to see.
The Office indicated that it would look into this issue and endeavour to make public the statistics that are useful to IPIC members.
4. Registrations not sent: discuss instances of registration that are never printed and mailed. (IPIC)
IPIC advised that there were several instances where they were only sporadically receiving registration certificates for designs.
The Office responded that there was an IT glitch that has since been corrected. Further, an additional step in the batch printing of registrations has been put in place to ensure that all registrations are printed.
Agenda Item #5: Roundtable (All)
No specific issues raised. This meeting was adjourned at 3:15pm.