June 28, 2017
On December 16, 2014, Bill C-43, Economic Action Plan 2014 Act, No. 2, received Royal Assent. Bill C-43 is an omnibus bill which implements many provisions that were tabled in the 2014 federal budget, including amendments to the Industrial Design Act in order to bring it in line with the Hague Agreement. The Canadian government signed the Hague Agreement governing the international registration of industrial designs in an effort to align the practices of the Canadian Industrial Design Office with those of other industrial partners and to simplify the process of securing design rights, and reduce costs to industry. To date, 66 parties have signed the Hague Agreement including the United States, the European Union, Japan and the Republic of Korea.
As explained in our earlier article entitled: “Canada prepares for Hague Agreement on international industrial design registrations”, the amendments to the Industrial Design Act include: codifying a ‘novelty’ test to replace the previous ‘originality’ test, allowing domestic priority, and changing the registration term to the later of 10 years from the date of registration and 15 years from filing.
The changes to the Industrial Design Act cannot go into effect until new Industrial Design Regulations have been finalized by the Governor in Council. A draft copy of the proposed Industrial Design Regulations were released for public consultation on June 19, 2017, with the request that any remarks be filed by July 14, 2017. The proposed Industrial Design Regulations would make extensive changes to the previous regulations, including the following:
- Section 14 - applications are no longer restricted to either photographs or black-line drawings. Under the proposed regulations a combination of photographs, black-line drawings, or other ‘visual reproductions’ that the Design Office deems allowable, may be used;
- Section 20 - divisional applications must be filed within 12 months of the filing date of the parent application. The exception is that if a unity objection is received, the deadline is 6 months from the filing of a response amending the application to remove that embodiment of the design;
- Section 22 - applicants will have 3 months to respond to Office Actions, rather than the previous 4 months. A single extension of time, of 6 months, will still be available. Reinstatement is also available within 6 months, if the application is abandoned for failure to reply to an Office Action;
- Section 23 - an application may be advanced out of the routine order for examination on payment of a $500 CDN government fee. There are no other requirements set out in the proposed regulations to advance the examination of a design application. Conversely, applicants may delay registration of a design for up to 30 months, on payment of a $100 CDN government fee. This may be used to prevent the design from becoming open to the public;
- Section 31 - the new novelty provisions under the Industrial Design Act do not apply in respect of applications filed by the same applicant within the last 12 months. That is, applicants may file new, related designs within 12 months, without being concerned that their previous application may be cited against them; and,
- Sections 41 to 52 - the proposed regulations provide details of the handling of Hague applications in Canada. A Hague application is a design application that is filed with and examined by the World Intellectual Property Organization. The purpose of the Hague system is to control costs when filing a large number of designs in a large number of countries; as many as 100 designs may be filed in 66 countries, through a single Hague application.
As noted above, the proposed Industrial Design Regulations are still at the public consultation stage, and will not go into effect until approved by the Governor in Council. So, it may be some time before the new Industrial Design Act and Industrial Design Regulations go into effect. We will continue to monitor and report on the status of the regulations and their anticipated impact as developments arise.
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