Registration

SOR/2008-268 September 5, 2008

INDUSTRIAL DESIGN ACT

Regulations Amending the Industrial Design Regulations

P.C. 2008-1616 September 5, 2008

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 25 (see footnote a) of the Industrial Design Act (see footnote b), hereby makes the annexed Regulations Amending the Industrial Design Regulations.

REGULATIONS AMENDING THE INDUSTRIAL DESIGN REGULATIONS

AMENDMENTS

1. (1) Subsection 6(1) of the Industrial Design Regulations (see footnote 1) is amended by adding “and” at the end of paragraph (a), by striking out “and” at the end of paragraph (b) and by repealing paragraph (c).

(2) Subsection 6(2) of the Regulations is amended by adding “and” at the end of paragraph (a), by striking out “and” at the end of paragraph (b) and by repealing paragraph (c).

2. (1) The portion of subsection 9(2) of the Regulations before paragraph (a) is replaced by the following:

(2) An application must include the following information and documents in addition to the declaration mentioned in paragraph 4(1)(b) of the Act:

(2) Paragraph 9(2)(d) of the Regulations is replaced by the following:

(d) a drawing or photograph in accordance with section 9.1; and

3. The Regulations are amended by adding the following after section 9:

9.1 (1) Drawings must have margins of at least 2.5 cm.

(2) All views on a drawing or photograph must

(a) be of sufficient quality to permit the features of the design to be identified clearly and accurately;

(b) clearly and accurately show the article to which the design is applied; and

(c) show the article in isolation.

(3) However, in the case of an application containing more than one view, a single view on a single drawing may show environment that is not part of the article to which the design is applied if that environment helps to make clear what the article is or what the features of the design are.

(4) Drawings must show

(a) the design in well-defined solid lines;

(b) portions of the article that do not form part of the design either wholly in well-defined solid lines or wholly in well-defined stippled lines; and

(c) the environment, if any, in well-defined stippled lines.

(5) For the purposes of subsection (4), “stippled lines” means broken lines formed by

(a) evenly spaced short dashes;

(b) evenly spaced dots; or

(c) evenly spaced and alternating short dashes and dots.

4. Sections 12 and 13 of the Regulations are replaced by the following:

12. (1) All documents filed with the Minister must be clear and legible and be presented so as to permit direct reproduction in black and white.

(2) Documents filed in paper form must be printed

(a) on one side only;

(b) on white paper, except for photographs; and

(c) on paper that measures between 20 cm and 22 cm in width and between 25 cm and 36 cm in length.

(3) Documents filed in electronic form in connection with applications and registered designs must be in an electronic format specified by the Commissioner in the Canadian Patent Office Record.

13. (1) The Minister shall refuse any document submitted to the Minister that is not in the English or French language unless the applicant submits to the Minister a translation of the document into one of those languages.

(2) The text of an application shall be wholly in English or wholly in French.

5. Schedule 1 to the Regulations is amended by replacing “(désignation de l’objet / title identifying article)” with “(titre identifiant l’objet fini ou l’ensemble / title identifying the finished article or set)”.

COMING INTO FORCE

6. These Regulations come into force 30 days after the day on which they are registered.

REGULATORY IMPACT
ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Issue and objectives

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

The primary purpose of the 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 will 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, these amendments 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 will provide for increased flexibility to applicants as well as greater clarity with particular respect to drawing and photograph requirements in the Regulations.

Furthermore, these Regulations contain a series of minor amendments for the purposes of clarity, consistency and housekeeping. Such amendments improve clients’ understanding of document requirements and the quality and content of documents, which will ultimately speed up the processing time by the Canadian Intellectual Property Office (CIPO). Finally, several non-essential administrative requirements have been 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 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 1700 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 (1) colour, size and quality of applications; (2) illustration of a design as applied to an article; and (3) environment in a design application.

(1) 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. Therefore, this requirement has been 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 has been established, i.e. a standard size photograph of 20 cm by 25 cm rather than the previous minimum size of 21 cm by 28 cm.

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

The 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, the reference to “black” has been 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: (a) to illustrate the article in its entirety in solid lines, or (b) 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. The Regulations have been updated to provide for this option, which gives increased flexibility to applicants in the preparation of drawings.

(3) 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. The Regulations are 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 is the article or what are the features of the design.

Furthermore, a series of minor amendments were made for clarification, consistency and housekeeping purposes. The 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. In addition, documents filed in electronic form must now be submitted in an electronic format specified by the Commissioner in the Canadian Patent Office Record. Lastly, references to outdated methods for the reproduction of drawings and photographs (i.e. reproduction by photography, electrostatic processes, photo offset and microfilming) has been removed to allow for technology neutral language.

It is worthy of note that two of the above-mentioned amendments contribute to the Government of Canada’s Paper Burden Reduction Initiative: 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, other non-essential requirements have been eliminated in an effort to reduce adminstrative burden for business. For instance, when corresponding with CIPO about their applications or registrations, clients are no longer required to provide the title of their design. The applicant or owner’s name and the application or registration number now suffice. Moreover, the margin requirement for documents other than drawings has been eliminated.

The goal of these 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 these 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

The proposed amendments were pre-published in the Canada Gazette, Part I, Vol. 142, No. 23 on June 7, 2008, and were also posted on CIPO’s Web site. No comments were received during the 30-day consultation period.

Prior to the pre-publication in the Canada Gazette, Part I, the members of the Intellectual Property Institute of Canada (IPIC) participating in the Joint Liaison Committee — Industrial Design (JLC-ID) supported the proposed amendments. IPIC is a major stakeholder that represents most of the intellectual property agents in Canada. JLC-ID is co-chaired by CIPO and IPIC with the objective 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.

Implementation, enforcement and service standard s

The amendments come into force 30 days after the day on which they are registered.

Stakeholders are already aware of the changes. However, to increase the level of awareness among the general public, information and practice notices will be posted on CIPO’s Web site. Articles will also be posted on CIPO News Updates bulletins, as well as on IPIC’s bulletins.

There are no compliance nor enforcement costs borne by the Government of Canada, as industrial design rights are privately enforced by rights owners. Pursuant to section 15 of the Industrial Design Act, an action for infringement may be brought forth in any court of competent jurisdiction by the owner of the design or by the licensee.

To measure the effectiveness of these amendments, CIPO will seek regular feedback through the ongoing co-chaired JLC-ID committee. Furthermore, as part of its ongoing efforts to deliver first-rate service, CIPO regularly measures the satisfaction of current applicants and intellectual property agents through various surveys. Comments received from these sources will be assessed and necessary adjustments will be made if required.

Contact s

Denis Wong
Chief, International and Regulatory Affairs Branch
Canadian Intellectual Property Office
Place du Portage, Phase II
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
50 Victoria Street
Gatineau, Quebec
K1A 0C9
Telephone: 1-866-997-1936 (Client Service Centre)
Email: cipo.contact@ic.gc.ca

Footnote a
S.C. 1993, c. 44, s. 170

Footnote b
R.S., c. I-9

Footnote 1
SOR/99-460

NOTICE:
The format of the electronic version of this issue of the Canada Gazette was modified in order to be compatible with extensible hypertext markup language (XHTML 1.0 Strict).