July 30, 2018

Canada updates its Design Regulations and moves towards the Hague Agreement accession

On June 27, 2018, the Government of Canada published the finalised version of the revised Regulations on Industrial Designs. The amended Regulations have not only become the embodiment of the modernised law but have also paved the way towards Canada’s accession to the Hague Agreement. The most noteworthy changes in the Regulations are described below.

The filing requirements have been facilitated. There are now no prescribed forms to be filled in. A brief design description is now optional, whilst the design representation requirements are much more flexible. Consequently, in order to establish the filing date for a design application, it is now enough to file a request for registration, indicating the applicant’s name and contact details, as well as the design representation.

Besides these changes, the requirements for representatives have been slightly simplified. An applicant may appoint a patent agent or file an application, pay any fee or file a request for transfer by himself or authorise a third party for such an action. Moreover, now the applicant may communicate with the CIPO regarding the whole design portfolio, unlike the previous requirement of communicating about each design separately.

The Regulations also clearly stipulate and broaden the concept of divisional application. The applicant will now have up to two years from filing the earliest parent application to file a divisional one or to have the latter further divided.

In addition, the term for responding to Office Actions has been reduced. Namely, the applicant has now three months instead of six to file a corresponding response with the possibility of further extension of this term for six months.

Under the updated Regulations, a design application is published upon its registration or 30 months from the earliest priority date, whichever expires earlier; before amendments, it was published only upon registration.

Furthermore, the maximal term of design protection has been extended from 10 years after the design registration date to 15 years after its filing date.

Amongst other things, the Regulations now clarify the procedures for an advanced examination, delayed registration, amendments, claiming priority, refunding the fees, and recordals. Accordingly, the recordal of a transfer of rights has been simplified, so that documents evidencing the assignment, are no longer required anymore. It is only necessary to indicate the name and address of the assignee and pay a corresponding fee.

The amended Regulations also include a whole chapter related to the filing, prosecuting and granting of the international applications under the Hague Agreement, for which Canada will be selected amongst the designated countries. The applicants will be able to use the benefits of the Hague system from November 5, 2018, when the corresponding provisions will finally become effective in Canada.

It is noteworthy that despite the substantial legal changes, the CIPO’s fee schedule remains unchanged.

With the modification of the design regime, Canada strives to reduce difficulties experienced by applicants, to provide them with the possibility of filing international applications under the Hague Agreement, to encourage businesses and to align its design registration framework with international practices.

Author: Lynda Miller