Industrial Design Office Practices (Page 1 of 4)
- 1. Correspondence
- 2. Filing date requirements
- 3. Other filing information
- 3.1 Filing date for a divisional
- 3.2 The fee as per Item 1 of the Tariff of Fees
- 3.3 Form set out in Schedule 1 of the Regulations
- 3.4 Priority
- 4. Request for accelerated examination
- 5. Classification and search
1.1 Delivery to the Commissioner
Mail delivered to CIPO's offices in Gatineau, or to one of Innovation, Science and Economic Development Canada's regional offices during business hours, will be considered to be received on the date of reception in that office.
Mail delivered to a regional office on a day when CIPO's offices in Gatineau are closed will be considered to be received on the next working day for CIPO.
Mail delivered through Canada Post's Registered Mail Service will be considered to be received on the date stamped on the envelope by Canada Post Corporation.
For a list of "designated establishments" see CIPO Practice Notice entitled Correspondence Procedures.
For practices regarding statutory holidays and time limits for filing documents, see CIPO Practice Notice entitled Statutory Holidays.
1.2 Transmission by electronic means
Industrial design applications may be e-filed through the CIPO website. For further details please consult the CIPO Practice Notice entitled Correspondence Procedures.
1.3 General rules
The Industrial Design Office will correspond with the applicant unless an agent has been appointed, in which case the Office will correspond only with the agent.
If the applicant decides to appoint an agent after the application has been submitted, an "Appointment of Agent" will be required.
If there is a change of agent during the prosecution of the application, a "Revocation of Agent" and a new "Appointment of Agent" will be required.
The correspondence will be in the language of the application, either English or French.
1.4 Third party correspondence
The Industrial Design Office will not correspond with a third party. The Office will correspond only with the applicant or their agent.
For a third party protest: The third party will be advised in writing that the letter was received but no response or comments will be made concerning the design.
1.5 Time limits
See Correspondence procedures section Statutory Holidays.
1.6 Correspondence procedures
See CIPO Practice Notice entitled Correspondence Procedures.
1.7 Payment of fees
See CIPO Practice Notices entitled Fee Payment Practice of the Canadian Intellectual Property Office and Fee Payment: General Authorization to Charge a Deficiency.
2. Filing date requirements
2.1 Name/address of the applicant and, if agent, the name/address of agent
The Industrial Design Office requires a mailing address to send correspondence to. If the applicant has an agent, the Office requires at least the agent's address. If there is no agent and the applicant has not provided a mailing address, the application will not have a filing date.
2.2 Title identifying the finished article
The applicant is required to provide a title that identifies the article.
2.3 Description identifying features that constitute the design
The applicant is required to provide a description that describes the features that the design is comprised of or, at a minimum, that identifies the design as that which is disclosed in the drawings, e.g., "The design is as shown in the attached drawings."
2.4 Drawings and photographs
At least one drawing or photograph is required that is of sufficient clarity to see the article and the design.
3. Other filing information
3.1 Filing date for a divisional
In the case of a design initially disclosed in an application, i.e., "parent" application that is later filed as the subject of a separate application, i.e., "divisional" application, the filing date for the divisional will be the same as the filing date for the "parent" application.
3.2 The fee as per Item 1 of the Tariff of Fees
For filing date purposes, the fee is not required. However, after the application has a filing date and the filing certificate has been sent, no further office action will take place until the fee is received. (See the Tariff of Fees for additional information).
3.3 Form set out in Schedule 1 of the Regulations
For filing date purposes, the application does not need to be in the form prescribed in schedule 1, as long as the information prescribed by Section 11 is provided in the documentation filed (which includes the covering letter).
3.4.1 Canada's obligation under the Paris Convention
Canada is a signatory to the Paris Convention. One provision of the Convention provides for a six-month period within which an application to register a design in a Convention country may be filed in other Convention countries. If filed during the six-month period, the application has the same force and effect as if it had been filed in the second country on the first date.
The Industrial Design Office meets the priority obligations of the Paris Convention and complies with Section 29 of the Industrial Design Act by waiting to register a design until the six-month anniversary date of the filing of the application or of the priority date, whichever is earlier.
Applicants should be aware that some countries might reject an industrial design application because the design has already been registered in another country. To help owners of designs in Canada avoid this, the Office allows applicants the option of delaying registration so that the applicant may file the application in another country. ( See Section 11 below entitled "Delay of Registration.")
3.4.2 Requirements for claiming the benefit of Convention priority
In accordance with section 29 of the Industrial Design Act; in order for an applicant (proprietor) to make a request for priority based on an earlier filed application in or for a foreign country, the foreign application must be the earliest filed application for the registration of the same industrial design, and the request must be filed with the Commissioner of Patents within a period of six months from the date of filing of the foreign application.
Subsection 20(1) of the Industrial Design Regulations requires that a request for priority be made in writing and include:
- the name of the country in or for which the application was filed;
- the foreign application number; and
- the filing date of the foreign application.
The Office considers that in order for an applicant (proprietor) to make a claim for priority based on an earlier filed application, both the request for priority and all of the priority information required by subsection 20(1) of the Industrial Design Regulations must be filed within a period of six months from the date of filing of the foreign application. Therefore, if any or all of the required priority information (as listed above: a request in writing, the foreign application number, the name of the country and the filing date) is not provided, it cannot be rectified by the Office after the expiry of the six-month period specified in subsection 29(1) of the Act.
If the Office is advised that a clerical error was made in the priority request or priority information concerning the name of the country, the application number, or the filing date of the earlier application, the Office may permit an amendment to correct the clerical error appearing in the priority information under section 20 of the Act either before or after the six-month period specified in subsection 29(1) of the Act.
The countries in or for which an earliest application may serve as the basis for priority are as follows:
- any country that is a member of the Union for the Protection of Industrial Property constituted under the Paris Convention;
- any member of the World Trade Organization (established by Article 1 of the WTO Agreement);
- Benelux (since the Uniform Benelux Design Law came into effect); and
- any country for which there is an international deposit in the International Bureau of the World Intellectual Property Organization (WIPO) made under the Hague Agreement. In this case, the request must indicate that the basis for priority is an international deposit and must name the country or countries for which it has been filed. Wording such as the following is suggested: "International deposit for (name of country/ies)."
The Office will accept the name of the foreign country, e.g., FRANCE, or the two letter code, e.g., FR, from the WIPO standard (Standard ST.3). The WIPO code list is available through the WIPO website.
Note: The European Community is a member of the WTO and a priority request may be based on an application filed with the EUIPO (European Union Intellectual Property Office) for a European Community design. In this case, the priority request must be clear that the application was filed for the European Community.
3.4.3 Priority right in respect of only certain figures in the drawings
In the case of an industrial design application with a priority claim where the applicant specifies that priority is claimed with respect to only certain figures in the application (not all figures):
- If all of the figures in the application are considered to disclose the same design (either one design or variants), the priority right is considered to apply to the entire application, i.e., the entire Canadian application is deemed to have the same force and effect as if filed on the filing date of the priority application.
- On the other hand, if the figures in respect of which priority has been claimed disclose a design that is substantially different from the design disclosed by the other figures, the latter figures must be removed from the application and could be made the subject of a divisional application. The priority right is considered to apply to the "parent" application but would not apply to the divisional, i.e., the divisional is not deemed to have the same force and effect as if filed on the filing date of the priority application. The filing date of the divisional application would be the same as the filing date in Canada of the parent.
3.4.4 Priority right in the case of citation of a pending design
If prior to the registration of a design with a priority claim another application is filed for a design, which is considered to be similar (a citation), the Office will notify the applicant requesting priority that a similar pending design exists and will also request a certified copy of the foreign application and a certificate from the foreign office showing the date of filing in that country (refer to Section 20.2 of the Industrial Design Regulations).
If the certified copy shows that the foreign application does not include all of the figures shown in the Canadian application but those figures disclose variants, the priority will apply to the entire Canadian application.
If the certified copy shows that the foreign application relates to a different design than that of the Canadian application, the priority right will not apply to the Canadian application.
4. Request for accelerated examination
Industrial Design applications are generally examined in the order according to the filing date of the application. The applicant may, however, request accelerated examination to advance the application out of its routine order.
In order to accelerate examination of an industrial design application, the Office requires a written request and payment of the fee under Item 12 of the Tariff of Fees.
If these requirements are met, the application will be processed and examined on an expedited basis. It is important to note that if the application is in compliance with formal requirements it will move more quickly through the process. Applicants are also reminded that an application can be registered no earlier than six months after the Canadian filing date due to priority obligations under the Paris Convention.
5. Classification and search
Each design is classified according to the Canadian Industrial Design Classification Standard in order to provide a means for searching. Classes are assigned based on the particular type of article to which the design is applied, e.g., a design for a hockey helmet would be classified in the head-wear sub-class of the apparel class.
It is important that the application indicate clearly what the article is so that the design can be accurately classified. For articles with a very specialized area of use or of a very technical nature, it is helpful if the applicant can provide information about the nature of the article and its area of use. Such information can be provided in a covering letter. In cases where it is not clear what the article is and how it should be classified, the Office will request further information from the applicant.
In order to assess the originality of a design, a search is done of registered designs and published art in the appropriate class(es) according to the Canadian classification system.
A search will only be conducted if it is clear from the title, description and drawings what the design is. A preliminary examination of the application will determine whether or not the design is clear. If it is not, the examiner will issue a report notifying the applicant that the search will be delayed until an amended application is received that is clear as to what the design consists of. Any deficiencies in formal requirements will also be brought to the attention of the applicant.
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