Author: Joe Conneely, Conneely PC
A Canadian industrial design application must be directed to only one design or to variants of one design. In particular, under Section 10 of the Industrial Design Regulations, an industrial design application must be directed to one design applied to a single article (or set) or to variants of one design applied to a single article (or set). According to the Industrial Design Office Practices guide, for a second design to be accepted as a variant of a first design, the second design must be very similar and possess the described features of the first design without substantial variation.
During examination, the Industrial Design Office conducts a prior art search to determine whether the design is original and reviews the application and drawings to determine whether various formalities set out in the Industrial Design Act, Industrial Design Regulations, and Industrial Design Office Practices guide are met. If the Office determines that the application is directed to more that one design, the Office will issue an office action (or Examiner’s Report) advising the applicant that the application must be limited (or restricted) to only one of the disclosed designs. The applicant must respond to the office action within 3 months of its issue date or the application will become abandoned.
In response to such an office action, the applicant may amend the application to include only one design. In addition, the applicant may file a separate application (known as a “division” or “divisional” application) for each design deleted from the original (or “parent”) application. Note that each division or divisional application must be filed before the design remaining in the parent application is registered. Also note that a separate examination fee is required for each divisional application that is filed. Further note that each divisional application will receive the same filing date as the parent application.
It is the Industrial Design Office’s practice to register the design in each division or divisional application on the same date as the design in the parent application. As such, it is recommended that each divisional application be filed on the same date as the date when the parent application is amended to include only one design. The applicant should also notify the Office when an application is being filed as a division of another application. If more time is required to file a divisional application, the applicant may request a delay of registration of the parent application. Note that the Office’s practice of holding back the registration of the design in a parent application for 2 months to give the applicant time to file a divisional application has been discontinued.
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At Conneely PC, we expertly draft, file, and prosecute industrial design applications. Our industrial design drafting and prosecution experience extends from display screens and icons to containers, furniture, vehicles, consumer electronics, fashion, and apparel. If you need an experienced Canadian design lawyer, agent, or attorney for prosecuting your design applications in Canada, please contact us. By specializing, using the latest technology, and controlling overhead costs, we deliver great service for reasonable fees.
