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Intro to Canadian industrial designs for foreign firms

ATMAC Jul 23 2020

Industrial Designs

We are happy to assist foreign patent firms and professionals file industrial design applications at the Canadian Intellectual Property Office (CIPO). The below information briefly introduces Canadian industrial design practice and explains what we need from you to get started:

What it protects
Priority to earlier applications (filed within 6 months)
Grace period for self-disclosures (1 year)
Figures representing the design
Advanced examination
Office actions (3 month period for reply)
Extensions of time
Abandonment and reinstatement
Delay of registration
Divisional applications
Term
Maintenance fee
Getting started

What it protects

An Industrial Design in Canada confers exclusive rights for the three-dimensional features of shape and configuration as well as the two-dimensional features such as pattern and ornament, including colour, applied to a finished article. You may obtain protection for the design of the entire finished article, or part of it.

Priority

Canada is signatory to the Paris Convention for the Protection of Industrial Property (the Paris Convention). Thus, if you file your Canadian industrial design application within six months of the filing date of your earlier filing in another country for the same design, you can get a priority date that is the same as the filing date that was given to your first application.

A certified copy of the priority application (and English translation) is only required upon request from CIPO. However, in the event advanced examination is desired (see below), it is beneficial to provide a certified copy prior to being requested by CIPO.

1-year grace period for self-disclosures

Canadian industrial design law includes an automatic 1-year grace period protecting applicants from self-disclosures. The grace period spans one year backwards from the priority date of the application. Disclosures made within the grace period by either the person who filed the application or by anyone who obtained knowledge from that person do not destroy the novelty of the industrial design in Canada.

Figures representing the design

The fee for filing an industrial design in Canada includes examination and up to ten (10) figures for the design. An additional fee is charged for each figure in excess of ten.

Advanced examination

CIPO will advance examination of an application out of the routine order on request, including payment of an additional fee. No reasons for the request of accelerated examination are required.

To facilitate advanced examination, the applicant may request search based on priority and provide CIPO with a certified copy of the priority application along with English translation. CIPO will conduct the search as early as six months from the priority date of the design that is the subject of the application if the applicant submits a certified copy or makes available a copy of the previously regularly filed application through WIPO’s Digital Access Service for each previously regularly filed application on which the priority claim is based. To maximize its benefit, search based on priority can be combined with a request for advanced examination.

Confidentiality period

Industrial design applications are kept confidential by CIPO until registration or up to 30 months after the date of filing or priority. Once that confidentiality period is expired, the contents of the application will become available to the public.

Office actions (3 month period for reply)

If you receive an Examination Report, you must respond in writing within three (3) months. A one time extension of time is available but only if requested prior to the expiry of the 3 month deadline.

Extensions of time

Extensions of time for responding to Office reports can be requested by the applicant before expiry of the original deadline. Extensions up to six (6) months will generally be granted by CIPO.

Abandonment and reinstatement

If the applicant does not reply in good faith to an Examiner's report and the deadline for reply is missed, the application will be deemed to be abandoned. A request for reinstatement can be made within six (6) months of the missed due date. The request for reinstatement must include a good faith reply to the report along with a reinstatement fee.

Delay of registration

CIPO will delay registration of a design upon request from the applicant. This may be desirable to allow more time to file a divisional application or to file another application for the same design in another country (some jurisdictions may reject an industrial design application if the design has already been registered in another country).

When delay of registration is requested along with the required government fee, CIPO will delay the registration of the design until the day that is 30 months after the filing date of the application or, if a request for priority was made, 30 months after the earliest filing date of the previously regularly filed application on which the request for priority is based.

Divisional applications

You may file a divisional application for any design applied to a finished article that was disclosed in the original application on its filing date. The finished article must also have been disclosed in the original application.

A divisional application can be filed up to two (2) years after the filing date of the original application, or the earliest original application in the series of applications from which the divisional results. The original application – in other words, the application being divided – must be pending (e.g. the application must not be withdrawn, abandoned and past the reinstatement date, refused or registered).

Term

The term for the exclusive right granted by the registration of your design begins on the date of registration and ends on the later of the end of 10 years after registration and 15 years from the Canadian filing date. In other words, you may get between 10 to 15 years of exclusive right. To maintain the exclusive right for its complete duration, a maintenance fee must be paid - see next section.

Maintenance fee

Canadian industrial designs are subject to a single maintenance fee payment due within five (5) years of the registration of your design.

Getting started

To get started, please contact us and provide the following information:

  1. Priority application details including filing date (also include WIPO DAS code and English translation if available)
  2. English content of application (figures, description of the figures, etc.)
  3. Whether to request advanced examination
  4. Whether to pay the maintenance fee in advance
  5. Whether to request delayed registration

 

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