Vol. 142, No. 23 — June 7, 2008

Regulations Amending the Industrial Design Regulations

Statutory authority

Industrial Design Act

Sponsoring department

Department of Industry

(This statement is not part of the Regulations.)

Issue and objectives

This regulatory initiative proposes amendments to the Industrial Design Regulations (the “Regulations”) under the authority of the Industrial Design Act.

The primary purpose of the proposed changes to the Regulations is to improve the industrial designs regulatory regime, making it more user-friendly, cost-effective and responsive to clients’ needs.

These goals would be achieved by modernizing, simplifying and clarifying certain administrative processes, thereby reducing the administrative burden on applicants seeking to obtain industrial design rights in Canada.

More specifically, this initiative proposes to update requirements on the colour, size and quality of a design application, and the methods of illustrating the design and the article’s environment in drawings or photographs. These updates would provide for increased flexibility to applicants as well as greater clarity with particular respect to drawing and photograph requirements in the Regulations.

Furthermore, the proposal contains a series of minor amendments for the purposes of clarity, consistency and housekeeping. Such amendments aim to improve clients’ understanding of document requirements and the quality and content of documents, which would ultimately speed up the processing time by the Canadian Intellectual Property Office (CIPO). Finally, it is proposed that several non-essential administrative requirements be eliminated in keeping with the Government of Canada Paper Burden Reduction Initiative (PBRI) outlined in Advantage Canada.

Description and rationale

The Industrial Design Act and associated regulations relate to the protection of the visual features (i.e. shape, configuration, pattern, or ornament) of a finished article of manufacture, such as the shape of a bottle or ornamentation of a spoon. In order to obtain exclusive rights to an industrial design in Canada (e.g. right to prevent others from making, selling or renting), the proprietor (i.e. owner) of a design needs to file an application with CIPO.

CIPO is a Special Operating Agency of Industry Canada responsible for the administration of the intellectual property (IP) system in Canada. Its mandate is twofold: to deliver quality and timely IP products and services to its clients; and secondly, to increase the awareness, knowledge and effective use of IP by Canadians. In doing so, this allows the organization to contribute to Canada’s economic development by encouraging invention, innovation and creativity in Canada. CIPO’s activities cover patents, trade-marks, copyrights, industrial designs and integrated circuit topographies.

Within CIPO, the Industrial Design Division is responsible for processing industrial design applications seeking registration in Canada. Its main functions are to: (1) receive and examine applications for registration of industrial designs and to grant registrations to qualifying applications; (2) receive and record assignments and licences of industrial designs; (3) maintain a register of industrial designs; and (4) provide general information to the public about industrial design registrations.

Once an owner files an application with CIPO, a search of prior art (i.e. designs already registered or made public) is carried out by the Office. The application is then examined by a CIPO examiner to verify compliance with the requirements of the Industrial Design Act and the Regulations. In particular, the examiner assesses whether or not the design is original in comparison to other existing designs and whether the application satisfies all formal requirements. If the design meets all of the statutory criteria, it will be registered for a maximum term of ten years, subject to payment of a maintenance fee at the five-year mark. Industrial design rights are private rights in nature. Allegations of infringement are therefore settled between parties privately or through the judicial system.

In 2003 CIPO sought to improve the processing of industrial design applications. To that end, it carried out an analysis of its process and practices and met with members of the Intellectual Property Institute of Canada (IPIC), a national professional association comprised of over 1 700 patent and trade-marks agents, to seek their views. Subsequently, CIPO simplified its processes. With respect to CIPO’s practices, areas targeted for improvement were: (i) colour, size and quality of applications; (ii) illustration of a design as applied to an article; and (iii) environment in a design application.

(i) Colour, size and quality of applications

Currently, applicants have the option of sending their documents in either paper format or electronically. However, the application to register an industrial design is processed in electronic format only, and all paper-based drawings and photographs are scanned by CIPO in black and white. As a result of the change from a paper-based to electronic process, the current requirement in the Regulations for drawings and photographs to be in black and white only, is no longer necessary. It is therefore proposed that this requirement be removed from the Regulations to allow for the option that an applicant may file colour drawings and photographs, provided that they are clear and legible and can be directly reproduced. Furthermore, for all documents, and photographs in particular, a more reasonable minimum size requirement is proposed, i.e. a standard size photograph of 20 cm by 25 cm rather than the current minimum size of 21 cm by 28 cm.

(ii) Illustration of a design as applied to an article

The current Regulations state that a drawing must be made with clear, permanent black lines, but there is no guidance to applicants on the use of solid versus “stippled” (i.e. broken) lines in the drawings. (And, as described above, it is being proposed that the reference to “black” be removed.) In the particular case where a design is not comprised of the entire article (e.g. the arm of a chair rather than the entire chair), applicants want the flexibility to use either of the following options: (1) to illustrate the article in its entirety in solid lines, or (2) to illustrate only the design portion of the article in solid lines and the rest of the article in “stippled” (i.e. broken) lines. Both applicants and CIPO agree that this method is useful to distinguish the design from the rest of the article in the drawing when the design is only a portion of the article. It is therefore proposed that the Regulations be updated to provide for this option, which gives increased flexibility to applicants in the preparation of drawings.

(iii) Including environment in a design application

Pursuant to paragraph 13(4)(b) of the Regulations, any drawing or photograph provided by an applicant must show the article in isolation. This practice is restrictive as it does not allow applicants to show “environment” (i.e. subject matter that is not part of the article to which the design is applied). Including a view in the drawings that shows environment is often helpful in understanding the article and/or the design because it provides a context for the article as it would appear in use. It is thus proposed that the Regulations be amended to include an exception to the aforementioned provision to allow applicants to include one view in the drawings that shows environment in stippled lines, provided it helps to make clear what the article is or what are the features of the design.

Furthermore, a series of minor amendments are proposed for clarification, consistency and housekeeping purposes. Proposed changes include requiring “clear and legible” writing on applications, adding a provision to the Regulations to clarify the language requirements for documents submitted by clients, re-ordering the sections in the Regulations so that drawings and photograph requirements are more appropriately found under the application requirements in section 9 of the Regulations, and modifying the French translation of the term “title” in industrial design application form Schedule 1, for consistency purposes. It is also proposed that documents filed in electronic form be submitted in an electronic format specified by the Commissioner in the Canadian Patent Office Record (CPOR). Lastly, it is proposed that references to outdated methods for the reproduction of drawings and photographs (i.e. reproduction by photography, electrostatic processes, photo offset and microfilming) be removed and allow for technology neutral language.

It is worthy of note that two of the above-mentioned proposals contribute to the Government of Canada’s PBRI: the ability to file colour drawings and photographs rather than being restricted to black and white; and the removal of outdated methods of reproduction. Additionally, it is proposed that other non-essential requirements be eliminated in an effort to reduce paper burden for business. For instance, when corresponding with CIPO about their applications or registrations, clients would no longer be required to provide the title of their design. The applicant or owner’s name and the application or registration number would suffice. Moreover, the margin requirement for documents other than drawings would be eliminated.

The goal of the proposed changes is to make the industrial design regime more user-friendly, cost-effective and responsive to clients’ needs by, among other things, providing more flexibility for the applicants, eliminating several administrative requirements and clarifying some provisions in the Regulations. The alternative to the proposed amendments is the status quo, which would imply that applicants and intellectual property rights holders would not see a reduction in administrative burden and would continue to bear unnecessary costs.

Consultation

In 2003 CIPO set up a co-chaired Partnership Committee on Industrial Design [now known as the Joint Liaison Committee — Industrial Design (JLC-ID)] with the IPIC, a major stakeholder that represents most of the intellectual property agents in Canada. The objective of the JLC-ID is to provide a forum to identify and discuss issues with a view to improving industrial design services to clients, and to broaden and strengthen communications between CIPO and industrial design stakeholders.

Denis Wong
Chief, International and Regulatory Affairs Branch
Canadian Intellectual Property Office
Place du Portage, Phase II, 4th Floor
50 Victoria Street
Gatineau, Quebec
K1A 0C9

Rita Carreau
Manager, Technical Policy
Copyright and Industrial Design Branch
Canadian Intellectual Property Office
Place du Portage, Phase II, C231
50 Victoria Street
Gatineau, Quebec
K1A 0C9
For telephone inquiries: 1-866-997-1936