Mr. Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
Mr. Curtis Behmann, Intellectual Property Institute of Canada (IPIC)
1. Opening remarks
The co-chairs began by welcoming the members present. The co-chair, Mr. Mesmin Pierre, introduced his CIPO colleagues who will provide answers to questions.
2. Update from CIPO
The recovery plan was recently launched to improve timeliness in examination in terms of functionalities, and, also provide support and assistance.
Onboarded 5 new ID examiners on April 12th. Classroom training is complete and are now being coached. In addition, 2 senior examiners who had previously left the Branch, returned on April 29th.
The return to the workplace will be safe. There is no date set at this time.
3. Clarification on the Office's Examination Practice for Broken Lines
As per subsection 17(3) of the ID REGS, an application is deemed not to relate to a feature that is shown in the representations of the design in dotted or broken lines. As a result, any dotted or broken line with a purpose other than illustrating non-design features must be clearly identified in the statement. For the sake of clarity, the office does not recommend using the same method of stippling for multiple purposes in the same application; however, if the scope of the design is clear, taking into consideration the name of the finished article, statement and representations, an objection would not be raised.
In determining whether the design is fully disclosed, the Industrial Design Office takes into account the representation of the design, any statement or description provided and the name of the finished article. It is acceptable to use the same type of broken lines to illustrate both non-design portions and a boundary line that forms no part of the article, as long as there is no ambiguity as to the scope of the design. Therefore, the purpose of the broken lines has to be clearly defined in an accompanying statement. Should the scope of the design be unclear, the Industrial Design Office will issue an objection to the design's registration and require additional information or amendments.
4. Comparison of Turnaround Times of Hague and non-Hague Applications
Hague and domestic applications are subject to different processes. The requirement for Hague applications is that Canada must notify the International Bureau (IB) within 12 months of the international registration publication date if the application is refused.
The average time to publication for domestic applications is 14.5 months, for Processing of Hague applications is 11 months. Publication of national applications is calculated from the date of allowance.
The Office suggested to combine two factors: the first is to submit the priority documents and the request for examination, the second is a quick turnaround time for amendments when corresponding with CIPO.
5. Order of Appearance of Uploaded Drawings
External users use the system differently. The Office will study what is happening and find a solution accordingly. The appearance should be sorted in numerical order. The Office can correct this manually. To give specific examples, when it is corrected, the code is changed. The problem arises when there are more than 10 drawings.
A listserv will be sent to members to inform them of updates.
In addition, the Office continues to work on the numbering for the Hague files.
An update will be provided at the next meeting.
6. Submission of DAS Code for Expedited Search
The process for submitting the DAS code to expedite is to submit priority documents 6 months in advance, and submit new files on the application.
Members were reminded that under section 3.1 of the Industrial Design Act, corrections to registrations must be made within 6 months from the date of registration of the design. Accordingly, it is important to review the registration package and make a request for correction as soon as possible. After the 6 month period has expired, the registration can no longer be corrected, even if the correction request was submitted before the expiry. The error must be obvious from the documents relating to the registered design that are in the Industrial Design Office at the time of registration. For example, the name of the finished article on the registration is different from the name of the finished article that is indicated in the documents on file. In cases where the documents on file all indicate the incorrect name of the finished article, the registration cannot be corrected as the error is not obvious from the documents on the file at the time of registration.
CIPO-TIDB also took the opportunity to remind the committee that the 60-day online consultation on the proposed changes to the review and refusal process for industrial design examination decisions will be coming to a close next Monday, May 31st.
8. Next meeting
The next meeting will be on September 24, 2021 in the same manner (via Ms Teams). Meetings will be scheduled to discuss timeliness.
The co-chair thanked all members for attending.