We Asked, They Listened: CIPO Modernizes its Industrial Design Practice

Published January 23rd, 2017

On January 16, 2017, the Canadian Intellectual Property Office (CIPO) issued a practice notice outlining six (6) changes to its industrial design practice.  The practice notice can be found here.  The six changes are related to:

1. Computer-generated animated designs;
2. Colour as a registrable feature;
3. Reducing time limits to respond to examiner’s reports
4. Searching to assess originality where there is a priority claim
5. New notices of possible refusal
6. Delaying the registration of an application

These changes are effective immediately.  The specifics of each change is outlined below.

Computer-generated animated designs

CIPO will now consider computer-generated animated designs as one design, viewed as a sequence of frames.  Previously, CIPO examined the various states of animated designs as distinct designs.

Applicants seeking industrial design protection for computer-generated animated designs can now file a single industrial design application thereby reducing the overall cost of registration.

Colour as a registrable feature

CIPO will now recognize colour as forming part of a combination of features of an industrial design.  Previously, CIPO did not recognize colour as being a feature of an industrial design.

Applicants can now pursue industrial design protection for an article where colour is an important feature of their design.

Reducing time limits to response to examiner’s reports 

The deadline to respond to an examiner’s report is now three (3) months.  Previously, the deadline to respond was four (4) months.

Applicants can now expect the examination of an industrial design application to be more timely.

Searching to assess originality where there is a priority claim

CIPO will now conduct a prior art search as early as six (6) months from priority date when an Applicant voluntarily submits certified priority documents to support the priority claim.  Previously, prior art searches were conducted as early as six (6) months from the filing date of the application.

Applicants can now speed up the examination process by filing certified priority documents when necessary.

New notices of possible refusal

CIPO will now issue a Notice of Possible Refusal giving an Applicant three months to request a review of the file by the Patent Appeal Board.  If no response is received within the three months, the application will be considered for refusal and a decision will be communicated to the Applicant.   Previously, CIPO would issue a Final Report upholding its objections to registration.  Failure to response to the Final Report led to abandonment of the application.

Applicants can now expect a definitive answer from the Minister in the event that they do not respond to a Notice of Possible Refusal.

Delaying the registration of an application

CIPO will now grant a delay of registration up to six (6) months from the date of allowance, at the request of the Applicant and upon payment of a delay of registration fee.  CIPO will send a letter that includes the date of allowance, confirmation of the start of the delay and the earliest possible date of registration once the delay expires.  Previously, CIPO would start the delay on the date that a request for a delay of registration was received.

Applicants now clearly know when a requested delay of registration starts.  This will allow Applicants to benefit from an optimal delay period.

Not only do the above changes modernize traditional industrial design practice, but these changes also help to align CIPO’s practices with those of a number of foreign design offices.  While a number of the changes appear straightforward, time will tell if any issues arise between Applicants and CIPO.

Link to practice notice:

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04191.html

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