CIPO Releases Updated Industrial Design Office Practices

© 2004, Deeth Williams Wall LLP, All Rights Reserved

By: Jason Young, Student at Law

(December 21, 2004)

The Canadian Intellectual Property Office introduced significant changes to its Industrial Design Office Practices on November 12, 2004. CIPO indicated that the changes have been made in conjunction with a stakeholder group, the Partnership on Industrial Design, in order to simplify the application process and improve response times and volume. The new practices make some significant changes to the old, which should be noted.

CIPO will now conduct a preliminary examination of all new applications to determine if the design is clear. If the examiner does not consider the design clear, he or she will notify the applicant and seek clarification.

There is now also much greater flexibility with respect to titles. For example, limited references to function or construction principles, including material, will now be accepted provided that the common name is also included and the references are not excessive or long-winded. Under the old practices, references to function or material were prohibited. However, this new flexibility comes with greater risk, as any wording other than that which clearly identifies the article may also limit protection afforded.

It is no longer acceptable to show kits unassembled. Only the fully-assembled view of the finished article will be accepted. Parts that are not visible in the completely assembled article are not registrable and should not be shown or labelled.

The Office has relaxed the practices regarding time extensions. Under the former practices, the maximum extension period typically would not exceed three months. The new practices grant automatic requests for four month maximums per request and up to 12 months cumulative of all requests.

The Office Practices now stipulate that variants must be "very similar" and possess the described features "without substantial variation". Under the former practices the scope of acceptable variation was broader and mirrored language found in s. 2 of the Industrial Design Act, R.S.C. 1985, c. I-9, requiring only that articles not differ "substantially from one another". The s. 2 threshold is a low one, as evidenced by the Patent Appeal Board's finding in Re: Application for Industrial Design by Sylve Youle-White (1985), 9 C.P.R. (3d) 129 where it found that an impression of same origin or an image element that imparts the sameness of design should be sufficient. It is not clear how the Office will reconcile these two standards.

Following the publication of the new practices, CIPO also published a number of practice notices which give some indication as to how the Office might exercise its discretionary authority in future. For example, the Office has indicated that it will no longer object to colour drawings or photographs as long as they show the features of the design clearly and accurately in black and white. Colour remains unregistrable as a feature, with the effect that colour drawings and photographs are treated as if they were black and white. The Office will now also accept one view of the drawn design in its environment, provided that: the application contains more than one view and all other views show the article in isolation; and, the inclusion of the environmental context helps to provide a better understanding of what are the features of the design. The Office has also adopted new practices relating to prior art searches.

Revised Industrial Design Office Practices http://idop.notlong.com Practice Notices on Colour, Size, and Quality Requirements; Environment; and Prior Art Searches http://idop2.notlong.com

Contact James Kosa for more information.