Canada's recent accession to the Patent Law Treaty marks the near completion of its long and ambitious journey to modernise its patent, trademark and industrial design laws and harmonise its IP laws with its most important trading partners worldwide. As a result of the recent and upcoming changes, Canadian businesses and right holders alike can expect a more consistent and level playing field for securing IP rights.
Numerous and substantial amendments were recently made to the Industrial Design Act and the Industrial Design Rules. The amendments will modernise Canada's industrial design law and harmonise it with other jurisdictions. Among other changes, applicants may now file a divisional application for any design that is originally disclosed – not merely claimed – in a parent application as filed and choose whether to provide a description of the design or statement of limitation.
The government recently published the new Industrial Design Regulations in the Canada Gazette and set 5 November 2018 as the date on which the amendments to the Industrial Design Act and the regulations will come into force. The amendments will allow applicants to file international design applications designating Canada under the Hague Agreement and will be the first of several major changes to Canada's IP regime expected to take effect over the next year.
The governor in council recently took the formal step of publishing proposed new Industrial Design Regulations in the Canadian Gazette. The regulations are being amended in order to allow Canada to join the Hague Agreement Concerning the International Registration of Industrial Designs, which provides a mechanism for registering an industrial design in several countries by means of a single application.
While the new Trademarks Act and Industrial Design Act have been finalised, the Trademarks Regulations and the Industrial Design Regulations have not. The Canadian Intellectual Property Office recently released the first draft of the new regulations, which provide considerable detail outlining how Canada will adhere to the Madrid Protocol, the Nice Agreement and the Hague Agreement.
In January 2017 the Industrial Design Office altered its treatment of design applications in a number of areas. In response to consultations with members of the profession, the office has now clarified certain procedural aspects by releasing additional guidance. Among other provisions, the guidance outlines how applicants can have certain new practices applied to pending applications filed before the new practices came into effect.
The Industrial Design Office recently announced changes that significantly modernise and streamline six of its office practices, substantially benefiting applicants seeking protection for their designs in Canada. Chief among these is that applicants will be able to claim colour as part of a design by filing colour photographs or drawings and stating in the design's description that colour is a feature of the design. This change significantly broadens the scope of subject matter available for registration.
A recent Federal Court of Appeal decision is a helpful reminder that industrial design protection for the visual features of a useful article is broad in scope and can extend to functional features of the article, provided that they are not dictated solely by function. This can provide a valuable and cost-effective way of protecting the shape, configuration, pattern and ornament of a useful article.
Can a book on a dark and dusty shelf in a public library render a patent obvious? In a recent decision the Federal Court of Appeal noted that none of the parties had made any submissions regarding whether codification of the test for obviousness changed the test for determining what documents would be included as part of the relevant prior art. In the absence of such submissions, the court applied the 'reasonably diligent search' test.
The government recently introduced Bill C-43, also known as the Economic Action Plan Act. In addition to implementing various tax measures, the bill seeks to make Canada's Patent Act and Industrial Design Act consistent with the Patent Law Treaty and the Hague Agreement Concerning the International Registration of Industrial Designs, respectively.
Canadian IP statutes and regulations include provisions that offer the possibility of extensions of time or reinstatement of applications filed in Canada. In some circumstances these provisions may allow applicants to preserve rights that otherwise might have been lost.
Although there are many similarities between US and Canadian patent law, certain significant differences can affect the key decision of whether to file in Canada. For example, the Canadian Patent Act provides for a grace period for pre-filing disclosures; however, there is no on-sale bar and no terminal disclaimer practice.
An industrial design registration can cover any of the visual features of an article, such as the shape, pattern or ornamentation. In addition to the merits of registering industrial designs in their own right, an industrial design registration can complement other forms of IP protection, such as patent and trademark protection.