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Discussion paper
Proposed change to the refusal and review process for industrial design examination decisions

From: Canadian Intellectual Property Office

The Canadian Intellectual Property Office (CIPO) is committed to delivering quality and timely IP rights that reflect client expectations. In order to improve quality and timeliness, CIPO is proposing a change to the refusal and review process for industrial design examination decisions and is seeking feedback from the community of industrial design professionals and the Canadian public. The current context and the proposed change, including the rationale and key considerations behind the change, are outlined below.

Current context

In order to ensure an industrial design is registrable, an application for registration is subject to examination by an industrial design examiner. Any objection to registration is communicated to the applicant through a report until a final refusal brings an end to the examination. Before a final refusal is issued, an applicant who has failed to overcome the objections to registration raised by the examiner will be invited, by way of Notice of Possible Refusal, to request a review of the decision by the Patent Appeal Board (PAB), which will in turn give rise to a final decision by the Commissioner. This review process is based on an administrative practice dating back to 1974 and is not prescribed by the Industrial Design Act or Regulations.

Figure 1 – Current Process
A map of the current process showing how objections to the registration of an industrial design are communicated to the applicant and the different steps an application could go through before a final decision is made.
Figure 1 - Text version

Examination reports are used to raise or maintain objection(s) to the registration of an industrial design. They invite the applicant to amend the application or provide arguments in order to overcome any objection(s). Under the current refusal and review process, if the applicant fails to overcome the objection(s) raised in a report, those will be maintained in a Notice of Possible Refusal. Three options are available to the applicant following the issuance of this final notice. If the applicant overcomes the objection(s), the design will be registered. If the applicant does not respond, the application will be considered for refusal by the Director General. Finally, the applicant may request a review by the Patent Appeal Board. The Board will acknowledge receipt of the request, issue a preliminary review letter and invite the applicant to request a hearing if needed. A decision will be made by the Commissioner based on the Board's recommendations. The Commissioner can either refuse the application or register the design. In both cases, the decision is final and no further Office action can be taken.

Proposed change

CIPO proposes to modify the current practice in order to entrust the review of examiner decisions to a subject matter expert from the policy and legislation group of the Trademarks and Industrial Designs Branch (TIDB) rather than to the PAB. This expert, supported by legal services, would review all applications that are to be considered for refusal and make a recommendation to the Director General, who in turn would either refuse the application or register the design. This process is similar to the model currently in place for the refusal of trademark applications, which are reviewed by the policy and legislation group.

In contrast with the current process where the applicant must request a review by the PAB in writing, the review of examiner decisions by the subject matter expert would be integrated directly into the examination process. In place of the Notification of Possible Refusal, a Final Examination Report would invite the applicant to amend its application so that the design is registrable or provide final arguments in writing. Should the response be insufficient to overcome the remaining objections to registration, the file would be communicated to the subject matter expert for review. If the applicant chose not to respond to the Final Examination Report, the application would be deemed abandoned pursuant to subsection 22(6) of the Industrial Design Regulations.

Figure 2 – Proposed Process
A map of the proposed process showing how objections to the registration of an industrial design are communicated to the applicant and the different steps an application could go through before a final decision is made.
Figure 2 - Text version

Examination reports are used to raise or maintain objection(s) to the registration of an industrial design. They invite the applicant to amend the application or provide arguments in order to overcome any objection(s). Under the proposed refusal and review process, if the applicant fails to overcome the objection(s) raised in a report, those would be maintained in a Final Examination Report. Three options would be available to the applicant following the issuance of this final report. If the applicant overcomes the objection(s), the design will be registered. If the applicant does not respond, the application will be deemed abandoned. Finally, if applicant fails to overcome the objection(s), the file will be sent for review by a subject matter expert. A decision to register the design or refuse the application would be made by the Director General based on the recommendations from subject matter expert. In both instances, the decision is final and no further Office action can be taken.

Rationale

The PAB is a specialized board composed of patent experts whose primary focus is to review patent decisions. With only eleven requests for review in the last five years, ID decisions represents a marginal part of their workload.

Entrusting the review of industrial design decisions to an expert from TIDB rather than to the PAB would make it easier to ensure consistency of final refusals guided by the new regime and would result in faster final decisions. In the context of the new regime, timely final decisions are increasingly important given that applications are now made available to the public after 30 months from their filing date (or the earliest priority date), whether a final decision was made or not, and that the duration of examination has a direct impact on the maximum term of protection that would be available. Given the PAB's current workload of patent decisions, CIPO believes the proposed change would indeed increase timeliness.

Key considerations

In establishing the proposed approach for the review of industrial design decisions, key considerations were taken into account. Generally, the new process must improve the quality and consistency in industrial design decisions. Foremost, the person handling the review must be knowledgeable in the field of industrial design. This person must have no previous involvement in the case in order to be able to make a fair and unbiased assessment of the application. CIPO believes the proposed change addresses those key considerations by making the review by a subject matter expert of the policy and legislation group an integral part of the examination process.

CIPO is mindful that the PAB currently offers an opportunity to make oral arguments before a board in support of an application. However, hearings would create additional complexity, hindering CIPO's capacity to issue decisions in a timely manner. Accordingly, hearings would no longer be available under the proposed change and CIPO considers that an opportunity to provide arguments in writing would be sufficient. In addition, CIPO is of the view that reintroducing a Final Examination Report would further improve timeliness by reducing unnecessary reviews and refusals as the absence of a response would lead to abandonment rather than to refusal.

Next steps and pilot project

CIPO looks forward to receiving feedback on the proposed change. Your observations will help determine whether this approach is appropriate or if it requires any changes.

In the meantime, CIPO will put in place a pilot project in order to test the proposed new process. As such, all requests for review by the PAB received by CIPO on or after , will be led by TIDB. CIPO will monitor and evaluate results gathered during the pilot project to inform its final decision. Please note that no end date has been set for the pilot project at this time as it is contingent on the number of reviews that will be requested. For greater certainty, also note that the pilot project does not extend to the implementation of a Final Examination Report and that applicants will continue to receive Notices of Possible Refusal.

Building on our commitment to stakeholder engagement, we will continue to keep you informed as we move forward with an updated refusal and review process for industrial design decisions.

Questions to consider

How to provide feedback

Please submit all feedback by email at ic.cipotmbplopicdmcpl.ic@canada.ca before .

Should you have any questions about this discussion paper, please contact Iyana Goyette, Deputy Director, Policy and Legislation, Trademarks and Industrial Designs Branch at iyana.goyette@canada.ca.

Related information

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