Amendments to the Industrial Design Act: Questions and Answers
Q1. What is the Hague System?
A1. The Hague System for the International Registration of Industrial Designs allows applicants to submit a single application to protect their designs in multiple countries or regions. This is done through the International Bureau (IB) of the World Intellectual Property Organization (WIPO). The Hague System also simplifies the management of industrial design registrations, since it is possible to record subsequent changes and to renew the international registration through a single procedural step at the IB.
The Hague Agreement consists of three separate acts: the London Act (1934), the Hague Act (1960) and the Geneva Act (1999). The Geneva Act is catered to jurisdictions that carry out substantive examination of industrial design applications, and is the act to which Canada is acceding.
You can find additional information about the Hague System on WIPO's website.
Q2. Why is Canada joining the Hague System?
A2. The Hague System benefits Canadian businesses by facilitating access to intellectual property rights in other markets through a single industrial design application at WIPO, with a minimum of formalities and expense. Using the Hague System relieves applicants of the need to make a separate national application in each of the countries in which they seek protection, thus avoiding the complications arising from procedures and languages that differ from one country to another. The Hague System is also centrally managed at WIPO, meaning that right holders can easily amend their information or renew their registrations in one step. Finally, one currency is used for all transactions.
In 2013, the House of Commons Standing Committee on Industry, Science, and Technology, released a report recommending that Canada look at acceding to certain key international IP treaties (including the Geneva Act of the Hague Agreement). Further to that, in the most recent federal budget (Economic Action Plan 2014), the Government committed to acceding to the Hague Agreement and signalled this intention in Parliament by tabling the Agreement itself.
Q3. Who else is a member of the Hague System?
A3. When Canada has completed accession to the Geneva Act of the Hague Agreement, we will join many of our major trading partners who are already part of the Hague System. Current members include the European Union and South Korea, and the United States and Japan have also begun the process of accession.
Here is a full list of Hague System members.
Q4. What changes have been made to the Industrial Design Act?
A4. A number of changes to the Industrial Design Act have received royal assent, and these changes are designed to facilitate Canada's accession to the Geneva Act of the Hague Agreement.
Here are some key changes:
- Simplified requirements for the mandatory contents of a design application
- Clearer registrability criteria for an industrial design
- Amendments to the grace period for the disclosure of a design
- Improvement to the clarity of the text on priority claims
- Clear reference to the electronic submission of documents to the Canadian Intellectual Property Office (CIPO)
- Amendment of the term of protection of a design from 10 years to 15 years
Changes to the Industrial Design Regulations will also be taking place in order to ensure the successful implementation of the Hague System in Canada. Changes to both the Industrial Design Act and the Industrial Design Regulations will have an impact on office procedures. CIPO will prepare all necessary documentation by the coming into force date.
Please note some additional information based on questions received from stakeholders during a webinar held on February 12, 2014:
- The grace period for the disclosure of a design will be 12 months counted from the priority date. As stated in the new Article 8, the priority date of a design is the Canadian filing date, unless a valid priority claim is made, in which case priority date is the filing date of the previously regularly filed application. Further, internal priority may be requested.
- The Regulations will provide further information about the circumstances in which paragraph 8.2(1)(c) does not apply, as in situations where a design has been disclosed in an application filed in Canada by the same applicant or their predecessor in title. The intent will be to provide flexibility to applicants and remove the need for the current office practice of "associations".
- The Regulations and office practices will provide further specification about the visual representations to be submitted in an application. The intent will be to provide flexibility to applicants and mirror what is acceptable under the Hague System. Visual representations in colour will be permitted.
- Multiple designs will be permitted in a single application.
- The term of protection in Canada will be changing from 10 years (counted from the Canadian registration date) to 15 years (beginning upon Canadian registration but expiring 15 years from the Canadian filing date). As indicated in Article 10, a safeguard is built in to ensure holders receive a minimum of 10 years' exclusive right (as per TRIPS obligations). Maintenance provisions will be further outlined in the Regulations.
- A deferment of publication regime will be adopted in Canada, and while the Act provides the outer limit of 30 months' deferment of publication (see 8.3(3)), the Regulations will specify the deferment period allowed by CIPO.
- There is currently no requirement for an agent at any point in the Canadian industrial design application process. This will not change. CIPO is, however, allowed to require the appointment of a domestic agent to overcome refusals at the international level - a decision will be made following the completion of the analysis on this issue.
Q5. What does “royal assent” mean? How is it different from “coming into force”?
A5. When the Senate and the House of Commons have both passed a bill in identical form, the Governor General, or one of his deputies, gives the bill royal assent on behalf of the Queen, and it becomes an Act of Parliament and, as such, part of the Laws of Canada.
There is, however, a distinction between the enactment of an act (royal assent) and its commencement (coming into force, i.e. becoming binding and capable of producing legal effects). The coming into force provision of an act may set a pre-established day for the act to commence, which could be on or after royal assent.
In this case, further work is needed to amend the Industrial Design Regulations and, as such, the amendments to the Act will not come into force right away.
Learn more about the coming into force of federal legislation.
Q6. Will it take more time to process my industrial design application when Canada joins the Hague System?
A6. CIPO has introduced internal methods and processes to reduce the time it takes to process an industrial design application. These methods include a complete review of the workflow process and the streamlining of search and examination processes by employing a first-in, first-out system. These measures are helping CIPO process industrial design applications faster than before, and will continue to be in place once Canada joins the Hague System. Industrial design application turn-around times (from application to registration) will continue to be closely monitored to respond to client needs.
Q7. Will it be more expensive for me to protect my design in Canada after Canada joins the Hague System?
A7. CIPO does not intend to increase its national industrial design fees at this stage. Should you choose to file for design protection through the Hague System, you can consult the Hague System schedule of fees.
Q8. Under the Hague System, what happens to an international industrial design application after I file it? What is WIPO's role, and what is CIPO's role?
A8. An international application is sent to the International Bureau (IB) of WIPO, which ensures the application meets all formal criteria and that the required fees are paid. This is where the applicants designate the countries within which they are seeking design protection through the Hague System. Once the application is deemed approved by WIPO, it is registered on the International Designs Bulletin and the designated countries receive the information about the international registration.
Upon electronic receipt of the information from WIPO, CIPO will carry out substantive examination of design applications prior to granting registration in Canada. The substantive examination process will be the same whether the application is submitted through the Hague System or the national route. However, it should be noted that under the international route (Hague), application formalities will not be assessed by CIPO (they are instead assessed by the IB at WIPO).
Any grant of protection or refusal will be sent by CIPO to WIPO within 12 months, and the right holder will be informed of CIPO's decision. Any correspondence to overcome a refusal will take place directly between CIPO and the applicant. Any appeals will continue to take place through the regular national route.
You can find more information about how the Hague System works in WIPO's Hague guide.
Q9. What if I want to file for design protection in Canada only?
A9. It will still be possible to register your design(s) solely in Canada through the usual national filing route at CIPO. The national option will be fully operational even when Canada accedes to the Hague System. The legislative and regulatory changes will apply to both national and international design filings as specified in those documents when they come into force. As such, the national application process will benefit from some of the same changes that will modernize and streamline CIPO's operations.
Q10. What are the next steps?
A10. The Canadian Intellectual Property Office is committed to working with stakeholders to ensure effective implementation of the Hague System in Canada. Over the coming months, CIPO will consult on the proposed related changes to the Industrial Design Regulations. Legislative and regulatory amendments will come into force once they are finalized and Canada is prepared to deposit instruments of accession to the Hague System to WIPO. CIPO will inform stakeholders in advance as we progress over the coming months.
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