On March 29, 2021, the Canadian Intellectual Property Office (CIPO) launched a consultation on proposed changes to the refusal and review process for industrial design decisions. CIPO’s Discussion Paper states that the proposed changes will “make it easier to ensure consistency of final refusals” and would increase the timeliness of final decisions.
Currently, before a final refusal is issued on an industrial design application, an applicant who has failed to overcome objections is invited, by way of Notice of Possible Refusal, to request a review of the decision by the Patent Appeal Board (PAB). CIPO’s proposed changes will integrate the review process as part of the examination process, eliminating the requirement for the applicant to request review. The proposed changes also 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 the PAB.
CIPO’s proposed changes replace the Notice of Possible Refusal with a Final Examination Report. If the applicant’s response does not overcome the objections maintained in the Final Examination Report, the file would be communicated to the subject matter expert for review. In an attempt to further reduce complexity and delays, CIPO also proposes to eliminate the option for the applicant to make oral arguments before the decision maker. Under CIPO’s proposed process, the subject matter expert would review the arguments on file and provide a recommendation to the Director General to issue a refusal or a registration.
The consultation is open until May 31, 2021 and comments may be submitted to email@example.com.
Summary By: Michelle Noonan
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