August 15, 2018
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CANADA: Mark Your Calendars: Canada’s Industrial Design System to Be Modernized in November
Canada has announced that the long-awaited modernization of its laws governing industrial designs, also known as design patents, will come into force on November 5, 2018. The primary result will be better harmonization of Canada’s industrial design system with those of other countries around the world.
The most significant changes are the following:
- Hague Applications Recognized—For many years, applicants in other countries have been able to take advantage of the streamlined and cost-effective Hague system to secure industrial design rights through one application in up to 69 contracting countries of the Hague Agreement Concerning the International Registration of Industrial Designs (the “Hague Agreement”), including the United States, the European Union, and Japan. As of November 5, 2018, Canada will become a contracting country of the Hague Agreement, as a result of which Canadian applicants will be able to take advantage of the benefits of the Hague system, and applicants outside of Canada will be able to secure rights in Canada through the filing of a Hague application.
- Formal Requirements for Applications Simplified—Under the new law, the formal requirements for a valid application will be relaxed. This change means that the filing process will be simplified.
- Term of Registration Increased—The term of an industrial design registration will be increased from the current 10 years from the registration date, to the later of that date and 15 years from the filing date. Because Canadian industrial design registrations are typically issued within one to 1.5 years of filing, this change will mean that, in most cases, the term of registered industrial design rights in Canada will be increased, most typically by about three to four years.
- Scope of Divisional Applications Broadened—Under the current law, a divisional application can only be filed with respect to a design which was applied for in the parent application. Under the new law, it will be possible for a divisional application to extend to any matter disclosed in the parent application.
- Self-Collision Risk Reduced—Under the current law, where an applicant has filed multiple applications for the registration of similar designs, should one of those applications proceed to registration before the others, it can be cited against the other applications. Under the new law, such “self-collision” citations will no longer arise, as long as all such applications are filed within 12 months of each other.
- Grace Period and Priority Date Now Tied Together—Canada’s 12-month grace period is presently measured back from the Canadian filing date rather than the priority date. This anomaly will be corrected under the new law.
These changes are part of the Canadian government’s efforts to better align Canada’s intellectual property laws with those of its international trading partners. As part of this initiative, it is anticipated that early 2019 will see the implementation of the previously announced changes to modernize both the Trademarks Act and the Patent Act.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
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