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Industrial Design Regulations (SOR/2018-120)

Regulations are current to 2024-05-28 and last amended on 2024-01-01. Previous Versions

PART 1Rules of General Application (continued)

Filing Date

Marginal note:Non-application to Hague application

  •  (1) This section does not apply to a Hague application or to a divisional application resulting from a Hague application.

  • Marginal note:Required documents, information and statements

    (2) The documents, information and statements prescribed for the purpose of subsection 4(3) of the Act are

    • (a) in respect of an application other than a divisional application,

      • (i) an explicit or implicit indication that the registration of a design is sought,

      • (ii) information allowing the identity of the applicant to be established,

      • (iii) information allowing the Minister to contact the applicant, and

      • (iv) a representation of the design; and

    • (b) in respect of a divisional application, those documents, information and statements received by the Minister under paragraph (a) in respect of the earliest original application in the series of applications from which the divisional application results.

  • Marginal note:Notice

    (3) In respect of an application other than a divisional application, the Minister must by notice inform an applicant whose application does not contain all the documents, information and statements referred to in paragraph (2)(a) of which documents, information and statements are outstanding and require that the applicant submit them no later than two months after the date of the notice.

  • Marginal note:Application deemed never filed

    (4) If the Minister does not receive those documents, information and statements before the end of that period, the application is deemed never to have been filed. However, the applicant is not entitled to a refund of any fees paid in respect of the application.

Examination

Marginal note:Registrability

  •  (1) The Minister must examine an application to determine if the design is registrable under section 7 of the Act.

  • Marginal note:Objections

    (2) Subject to subsection (3), if the Minister has reasonable grounds to believe that the design is not registrable, the Minister must send to the applicant a report setting out the objections to registration and inviting the applicant to reply to the objections no later than three months after the date of the report.

  • Marginal note:Objections to Hague application

    (3) In respect of a Hague application, the first report under subsection (2) must be sent by the Minister to the International Bureau in the form of a notification of refusal referred to in Article 12(2) of the Hague Agreement and the Minister is not required to send a copy of the report directly to the applicant.

  • Marginal note:Extension of time period

    (4) The time period to reply referred to in subsection (2) is extended by six months if, before it ends, the applicant submits a request to the Minister.

  • Marginal note:Limitation on extensions

    (5) Only one request under subsection (4) may be submitted in respect of a particular report.

  • Marginal note:Deemed abandonment

    (6) If the applicant does not reply in good faith to a report within the time period set out in subsection (2), or within the time period that has been extended under subsection (4), the application is deemed to be abandoned.

  • Marginal note:Reinstatement

    (7) An application that is deemed to be abandoned is reinstated if the applicant, within six months after the day on which the application is deemed to be abandoned,

    • (a) submits a request for reinstatement to the Minister;

    • (b) replies in good faith to the report; and

    • (c) pays the fee set out in item 9 of the schedule.

Marginal note:Advanced examination

 The Minister must advance the examination of an application out of its routine order on the request of the applicant and on payment of the fee set out in item 10 of the schedule.

Marginal note:Delayed registration

 In respect of an application other than a Hague application, on the request of the applicant and on payment of the fee set out in item 11 of the schedule, the Minister, if it is technically feasible, must not register a design until the day that is 30 months after the filing date of the application or, if a request for priority is made in respect of the application, after the earliest filing date of a previously regularly filed application on which the request for priority is based.

Amendments

Marginal note:Time limit to amend application

  •  (1) Subject to subsections (2) and (3), an application may be amended before the design is registered.

  • Marginal note:Limitations on amendment

    (2) An application must not be amended

    • (a) to change the identity of the applicant, except, in respect of an application other than a Hague application, to record a transfer of the application under section 13 of the Act or to substitute an applicant under subsection 4(2) of the Act;

    • (b) to add a representation of a design;

    • (c) to change a representation of a design if the amendment would result in the application being for a design that differs substantially from the design that was the subject of the application on its filing date or, in the case of a divisional application, on the day on which the Minister received the divisional application;

    • (d) to add or amend a statement under section 17 or 18 if the addition or amendment would result in the application being for a design that differs substantially from the design that was the subject of the application on its filing date or, in the case of a divisional application, on the day on which the Minister received the divisional application; or

    • (e) to add an indication that it is a divisional application, if more than three months have passed since the day on which the Minister received the application.

  • Marginal note:Limitation — application made available to public

    (3) If the application contains the name of a finished article in respect of which the design is to be registered, that application must not be amended, on or after the date prescribed under subsection 8.3(1) of the Act for making an application available to the public, to change that name to the name of a substantially different finished article.

Priority

Marginal note:Non-application to Hague application

  •  (1) This section does not apply to a Hague application or to a divisional application resulting from a Hague application.

  • Marginal note:Requirements

    (2) For the purpose of subsection 8.1(2) of the Act, a request for priority must

    • (a) be made in the application or in a separate document;

    • (b) indicate the filing date and the name of the country or office of filing of each previously regularly filed application on which that request is based; and

    • (c) be made no later than the earlier of the day that is six months after the earliest filing date of those previously regularly filed applications and the date of registration of the design that is the subject of the pending application.

  • Marginal note:Corrections

    (3) Subject to subsections (4) and (5), an error in the filing date, the name of the country or office of filing or the number of a previously regularly filed application submitted under subsection 8.1(2) of the Act may be corrected by the applicant before the design is registered.

  • Marginal note:Exception

    (4) After the date prescribed under subsection 8.3(1) of the Act for making the pending application available to the public, an error in the name of the country or office of filing submitted under subsection 8.1(2) of the Act may be corrected only if, on the day the application is made available to the public, it would have been obvious from the documents in the Minister’s possession relating to the application that the name of another particular country or office of filing was intended by the applicant.

  • Marginal note:Exception

    (5) An error in the filing date submitted under subsection 8.1(2) of the Act must not be corrected if more than six months have passed since the filing date of the pending application.

Marginal note:Copy of previously filed application

  •  (1) If an applicant requests priority in respect of a pending application on the basis of one or more previously regularly filed applications — other than an application previously regularly filed in or for Canada — the Minister may by notice request that the applicant of the pending application, no later than three months after the date of the notice,

    • (a) at the option of the applicant, either

      • (i) submit to the Minister a copy of the previously regularly filed application certified as correct by the office in which it was filed and a certificate from that office showing its filing date, or

      • (ii) make a copy of the previously regularly filed application available to the Minister from a digital library that is specified by the Minister or Commissioner as being accepted for that purpose and inform the Minister that it is so available; and

    • (b) if the previously regularly filed application is in a language other than English or French, submit to the Minister an English or French translation of the whole or a specified part of the previously regularly filed application.

  • Marginal note:Translation not accurate

    (2) If the Minister has reasonable grounds to believe that a translation submitted under subsection (1) is not accurate, the Minister may by notice request that the applicant, in the case of the pending application, submit to the Minister, no later than three months after the date of the notice,

    • (a) a statement by the translator to the effect that, to the best of their knowledge, the translation is accurate; or

    • (b) a new translation together with a statement by its translator to the effect that, to the best of their knowledge, the new translation is accurate.

  • Marginal note:Notice included in report

    (3) If the Minister issues a report under subsection 22(2), a notice under subsection (1) or (2) may be given by including the request in that report.

  • Marginal note:Extension

    (4) The time period for complying with a request under subsection (1) or (2) is extended by six months if, within that time period, the applicant submits to the Minister a request for an extension.

  • Marginal note:Limitation on extensions

    (5) Only one request under subsection (4) may be submitted in respect of a particular request under subsection (1) or (2).

  • Marginal note:Non-compliance with request

    (6) If the applicant of a pending application does not comply with a request under subsection (1) or (2) in respect of a particular previously regularly filed application before the end of the time period set out in those subsections or of the time period that has been extended under subsection (4), the request for priority is deemed to have been withdrawn with respect to that previously regularly filed application at the end of that time period.

Marginal note:Withdrawal of request for priority

  •  (1) For the purpose of subsection 8.1(4) of the Act, a request for priority may be withdrawn by submitting a request to the Minister before the design is registered.

  • Marginal note:Effective date

    (2) The effective date of the withdrawal of a request for priority is the day on which the request for withdrawal is received by the Minister.

Marginal note:Deemed action — divisional application

 If, on or before the day on which a divisional application is received by the Minister, one of the following actions has been taken in respect of the original application, the same action is deemed to have been taken on the same day in respect of the divisional application:

  • (a) a request for priority has been made and has not been withdrawn;

  • (b) information required under subsection 8.1(2) of the Act has been submitted to the Minister in respect of a request for priority;

  • (c) a copy or a translation of a previously regularly filed application, or a certificate showing its filing date, has been submitted to the Minister; or

  • (d) a copy of a previously regularly filed application has been made available to the Minister from a digital library that is specified by the Minister or Commissioner as being accepted for that purpose.

Marginal note:Priority effect of international registration

 For the purpose of sections 8 and 8.1 of the Act and of sections 26 to 29 and 45 of these Regulations, an application for international registration is, from its filing date as determined under Article 9 of the Hague Agreement, equivalent to a regular filing of an application in or for a country of the Union.

Novel Design

Marginal note:Non-application of paragraph 8.2(1)(c) of Act

 In respect of a particular application, paragraph 8.2(1)(c) of the Act does not apply in respect of a design that has been disclosed in another application that was filed in Canada by a person referred to in subparagraph 8.2(1)(a)(i) or (ii) of the Act if the filing date of that particular application is no later than 12 months after the filing date of the other application.

Applications and Documents Made Available to Public

Marginal note:Prescribed date

  •  (1) Subject to subsection (2), for the purpose of subsection 8.3(1) of the Act, the prescribed date is

    • (a) in respect of an application, other than a Hague application or a divisional application resulting from a Hague application, and in respect of all documents in the Minister’s possession relating to the application and the design’s registration, the earlier of

      • (i) the date of registration of the design, and

      • (ii) the day that is 30 months after the filing date of that application or of the application that resulted in that registration or, if a request for priority is made in respect of that application or of the application that resulted in that registration, the earliest filing date of a previously regularly filed application on which the request for priority is based; or

    • (b) in respect of a Hague application or a divisional application resulting from a Hague application, and in respect of all documents in the Minister’s possession relating to the application and the design’s registration, the date of publication of the international registration by the International Bureau.

  • Marginal note:Exception

    (2) If a document relates to more than one application or registration, for the purpose of subsection 8.3(1) of the Act, the prescribed date for that document is the earliest date prescribed under subsection 8.3(1) of the Act for an application or registration referred to in that document.

  • Marginal note:Withdrawal of request for priority

    (3) For the purpose of subsection (1), a request for priority with respect to a particular previously regularly filed application is deemed never to have been made if the request is withdrawn more than two months before the day referred to in subparagraph (1)(a)(ii), without taking the withdrawal into account.

  • Marginal note:Prescribed date regarding withdrawn application

    (4) For the purpose of subsection 8.3(5) of the Act, the prescribed date is the earlier of the date of registration and the day that is two months before the day referred to in subparagraph (1)(a)(ii).

Maintenance of Exclusive Right

Marginal note:Prescribed period

  •  (1) For the purpose of subsection 10(2) of the Act, the prescribed period begins five years after the date of registration of the design and ends on the later of the end of 10 years after the date of registration and the end of 15 years after the filing date of the application.

  • Marginal note:Deadline for payment

    (2) Subject to subsection (3), the fee for the maintenance of the exclusive right accorded by the registration of a design set out in item 2 of the schedule must be paid no later than five years after the date of registration of the design.

  • Marginal note:Exception

    (3) The fee for the maintenance of the exclusive right accorded by the registration of a design set out in item 2 of the schedule may be paid within six months after the end of that five-year period if the proprietor makes a request to the Commissioner within those six months and pays both the maintenance fee and the late fee set out in item 3 of the schedule.

 

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