Industrial Design Office Practices (Page 3 of 4)
- 7. Extension of time
- 8. Abandonment
- 9. Reinstatement
- 10. Withdrawal
- 11. Delay of registration
- 12. Registration
- 13. Amendment of a design registration
- 15 Assignments and other agreements
- Annex A – Originality: guiding principles
7. Extension of time
Upon receipt of a written request from the applicant, the Industrial Design Office will generally grant one (1) extension of time of six (6) months to reply to an Examiner's Report. If, following the expiry of the extension of time, the applicant fails to reply, the application will be considered abandoned.
No requests for any further extensions of time will generally be considered. In exceptional cases only the Office will consider granting one (1) additional extension of time up to a maximum of six (6) months. In such cases the Office will require that the applicant provide a written request that specifies the additional time required and explains the exceptional circumstances that prevent the applicant from replying to the Examiner's Report within the specified period.
If the circumstances explained by the applicant are not considered to justify a further extension of time, the Office will notify the applicant in writing that the request has been refused. The applicant will have one (1) month from the date of the notification to file a response or the application will be considered abandoned.
The following are examples of exceptional circumstances that could justify an additional extension of time:
- Recent change in the Applicant (i.e., by way of an assignment) and/or a recent change in the Agent:
If there has been a very recent change in the applicant and/or the agent, the Office may grant an additional extension of time, allowing the new applicant and/or the new agent to become familiar with the file in order to be able to reply to the outstanding report.
- Circumstances beyond the control of the person concerned:
Examples could include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.
If there is no response to a report within the specified period for reply, the application will be considered abandoned as of the date of expiry of the specified period for reply.
Once the application has been abandoned, the Office will send a "Notice of Abandonment" to the applicant as a courtesy. The notice will set out the reason for abandonment and the requirements for reinstatement. No fees will be refunded.
In accordance with Sub-section 5(4) of the Industrial Design Act and Section 17 of the Industrial Design Regulations, an abandoned application may be reinstated if the applicant submits a request for reinstatement within six months after the date of abandonment. The request must include a response to the outstanding report and the prescribed fee (Item 10 of the Tariff of Fees) for reinstatement. If these requirements are not met within the prescribed period, the application will become "inactive" and no further office action will be taken.
Applications and requests to record agreements or maintenance may be voluntarily withdrawn by written request.
Upon receipt of a written request to withdraw a design application, the application will be made "inactive" and a confirmation notice will be sent to the client. No further office action will be taken. The applicant may re-apply if the design was not published more than one year prior to the second filing.
Upon receipt of a written request to withdraw a request for recordal of an agreement or maintenance, the action will simply not be done.
A refund will only be issued in respect of any fees submitted if the request for withdrawal was received prior to any processing of the application or request.
11. Delay of registration
Some countries might reject an industrial design application because the design has already been registered in another country. For this reason, applicants may wish to delay registration to allow time to file the application in another country.
The Industrial Design Office will process such requests at any time before registration. The Office requires a written request accompanied by the required fee (Item 9 of the Tariff of Fees). A six-month delay will be granted beginning on the day the request is received. The same fee will be required for any further requests. During any six-month period of delay, the applicant may request that the application proceed to registration prior to the end of the six-month period.
The above will apply only in cases when an applicant requests to delay the registration of an application that otherwise would normally proceed with registration. This will not apply in situations relating to parent/divisional applications or similar designs filed by the same applicant provided that the applicant has notified the Industrial Design Office of the existence of such co-pending applications. In these situations, the usual practice of the Office is to register such applications on the same day.
Note: a new practice notice has been published for delay of registration. Please refer to the practice notice entitled “Delaying registration of an industrial design”, January 16, 2017.
Once the examiner has determined that the application is in an allowable state, it can proceed to registration. Upon registration the client will receive a:
- registration certificate;
- copy of the application;
- covering sheet summarizing the information about the design; and
- notice explaining the requirements for maintenance of the registration.
Upon registration, the design will be open for public inspection.
13. Amendment of a design registration
The Industrial Design Office may correct a clerical error in respect of a design registration. Any request to correct a clerical error must be made in writing. Confirmation of any correction will be made by issuing a correcting certificate. In the case of correction of an error not committed by the Office, a fee is required (please see Item 11 of the Tariff of Fees).
The Office will record any amendment ordered by the Federal Court and will provide confirmation by issuing a correcting certificate.
When the Office is notified of other types of changes that occurred subsequent to registration and not affecting the design itself, the Office will make a recordal of the change in the DesignPlus system, e.g., a change of address of the owner, a change of representative for service. In such cases the application as registered will not be amended.
Registered designs are valid for 10 years provided that the required maintenance fees are paid. Design protection ends 10 years after the registration date and cannot be extended.
If the owner of an industrial design wishes to maintain the protection beyond five years, the fee set out in the Item 2 of the Tariff of Fees must be submitted before the fifth anniversary of registration. If the fee is not received before expiry of the five-year period, the additional fee set out in Item 3 of the Tariff of Fees will also be required. If the design is not maintained within the five years plus six months, protection ends as of the next day.
15 Assignments and other agreements
Assignments and licences
Assignments and licences will be recorded in the Industrial Design Office upon receipt of an affidavit or a copy of the document effecting the assignment or licence and the prescribed fee (Item 4 of the Tariff of Fees).
The Office will check the chain of title to ascertain that the assignor is the current owner of record. The Office will contact the client if the documentation is unclear in this regard; further documentation or clarification may be required.
The Office will record an assignment or licence against only the design(s) that have been identified in the assignment document. If there are not enough fees to cover all the designs identified, the Office will request the additional fees before doing the recordal.
Other recordals (e.g., changes of name, mergers, security agreements)
These recordals affecting a pending or registered industrial design will be done by the Industrial Design Office upon receipt of a request and a copy of a document effecting the change of name or other recordal. No fee is required for these types of recordals. The Office will review the document(s) only to check the chain of title. The Office will contact the client if the documentation is unclear in this regard.
15.2 Notice of omission
Assignments and licences
Where a request to record an assignment affects a registered or pending design and does not meet the requirements of section 19 of the Industrial Design Regulations, the Industrial Design Office will send out a Notice of Omission setting out the outstanding requirements.
Affecting a registered design: If a response is not received within the specified period for reply in the notice, the recordal will not be done. No documents will be returned and a refund will be issued for any fees that were paid in accordance with item 4 of the Tariff of Fees, schedule 2 of the Regulations.
Affecting a pending design: If a response is not received within the specified period for reply in the notice, the recordal will be made in the name currently on record. No documents will be returned and a refund will be issued for any fees that were paid in accordance with the above-mentioned item 4 of the Tariff of Fees.
After expiry of the specified period for reply to the Notice of Omission, any applicant still wishing to record the assignment or licence (for either a pending or registered design) must send a new request.
Other recordals (e.g., changes of name, mergers, security agreements)
Where the documentation accompanying the request is unclear as to the chain of title, the Industrial Design Office will send out a Notice of Omission requesting clarification and/or further documents.
Affecting a registered or pending design: If a response is not received within the specified period for reply in the notice, the recordal will not be done. No documents will be returned.
After expiry of the specified period for reply to the Notice of Omission, any applicant still wishing the recordal (for either a pending or registered design) must send a new request.
Annex A – Originality: guiding principles
- When comparing designs to determine whether they are "substantially" different, it is a matter of impression to be judged solely by the eye.
- One must consider whether the originality of a design is substantial in regard to the quantity of prior art. The standard of originality varies from class to class depending on the degree of possible changes and on the quantity of registered designs in the field.
- In assessing originality, one must also consider the nature of the article and the constraints or limitations to which a designer is subjected when designing an article. Few changes are required to make a design "original" when an article has a very small range within which design creativity can be exercised. On the other hand, an article that has a very large range within which creativity can be exercised will require a higher standard of originality.
Supreme Court of Canada decision Clatworthy & Son v. Dale Display (1929), S.C.R. 429, "that to constitute an original design there must be some substantial difference between the new design and what had theretofore existed."
Bata Industries Ltd. v. Warrington Inc. (1985) 5 C.P.R. 339 "It seems to involve at least a spark of inspiration on the part of the designer either in creating an entirely new design or in hitting upon a new use for an old is 'novel in character or style, inventive, creative' (The Concise Oxford Dictionary , 6 th ed., 1976)."
Russell-Clarke on Copyright in Industrial Designs, Michael Fysh 5th, Sweet & Maxwell (London) 1974 at p. 36-38., and Re: Paramount Pictures Corporation Industrial Design Application (1981), 73 C.P.R. (2nd) 273: One must look at each design as a whole, and the test should not be only a side-by-side comparison of the differences. One should also consider the appeal to the eye of each design when they are seen separately, taking into account imperfect recollection.
Dover, Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910), 27 R.P.C. 175 p. 179, that, for a design to be registered, it "must be new or original with reference to the kind or article for which it is registered; meaning, by kind of article, not the class of article… but the kind of article having regard to its general character and use. A design may be new for a coal scuttle but not for a bonnet. On the other hand, a design for a shade of a gas lamp can hardly be new if it was old for an oil lamp." This narrows somewhat the parameters of the search that is performed. For example, if an application is received for a coal scuttle, a search of the container class is performed but the apparel class (bonnets) is not searched.
See Re: LeMay v. Welch (1884), 28 Ch. D. 24., Canadian Wm. A. Rogers, Limited v. International Silver Company of Canada, Limited Ex. Cr. (1932), p. 66., and Angelstone Ltd. v. Artistic Stone Ltd. C.P.R. Vol. 33; 156 at p. 170.: There must be substantial originality in the design having particular regard to the nature of the article, and mere changes in size or proportion do not necessarily render a design original and may limit other designers in the same trade.
See Phillips v. Harbro' Rubber Co (1920), 37 R.P.C. 233, and Kaufman Rubber Company, Ltd. v. Miner Rubber Company Limited Ex. C.R. 26: The inclusion of mere trade variants in an old design is not sufficient to render a design original. A variation that is known in connection with a particular article or class of articles does not constitute a substantial difference.
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