Industrial Design Office Practices (Page 3 of 17)

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• 3. Other filing information
  • 3.1 Filing date for a divisional
  • 3.2 The fee as per Item 1 of the Tariff of Fees
  • 3.3 Form set out in Schedule 1 of the Regulations
  • 3.4 Priority
    • 3.4.1 Canada's obligation under the Paris Convention
    • 3.4.2 Requirements for claiming the benefit of Convention priority
    • 3.4.3 Priority right in respect of only certain figures in the drawings
    • 3.4.4 Priority right in the case of citation of a pending design

3. Other filing information

3.1 Filing date for a divisional

In the case of a design initially disclosed in an application, i.e., "parent" application that is later filed as the subject of a separate application, i.e., "divisional" application, the filing date for the divisional will be the same as the filing date for the "parent" application.

3.2 The fee as per Item 1 of the Tariff of Fees

For filing date purposes, the fee is not required. However, after the application has a filing date and the filing certificate has been sent, no further office action will take place until the fee is received. (See the Tariff of Fees for additional information).

3.3 Form set out in Schedule 1 of the Regulations

For filing date purposes, the application does not need to be in the prescribed form as long as the information prescribed by Section 11 is provided in the documentation filed (which includes the covering letter).

3.4 Priority

3.4.1 Canada's obligation under the Paris Convention

Canada is a signatory to the Paris Convention. One provision of the Convention provides for a six-month period within which an application to register a design in a Convention country may be filed in other Convention countries. If filed during the six-month period, the application has the same force and effect as if it had been filed in the second country on the first date.

The Industrial Design Office meets the priority obligations of the Paris Convention and complies with Section 29 of the Industrial Design Act by waiting to register a design until the six-month anniversary date of the filing of the application or of the priority date, whichever is earlier.

Applicants should be aware that some countries might reject an industrial design application because the design has already been registered in another country. To help owners of designs in Canada avoid this, the Office allows applicants the option of delaying registration so that the applicant may file the application in another country. ( See Section 11 below entitled "Delay of Registration.")

3.4.2 Requirements for claiming the benefit of Convention priority

In accordance with section 29 of the Industrial Design Act; in order for an applicant (proprietor) to make a request for priority based on an earlier filed application in or for a foreign country, the foreign application must be the earliest filed application for the registration of the same industrial design, and the request must be filed with the Commissioner of Patents within a period of six months from the date of filing of the foreign application.

Subsection 20(1) of the Industrial Design Regulations requires that a request for priority be made in writing and include:

• the name of the country in or for which the application was filed;
• the foreign application number; and
• the filing date of the foreign application.

The Office considers that in order for an applicant (proprietor) to make a claim for priority based on an earlier filed application, both the request for priority and all of the priority information required by subsection 20(1) of the Industrial Design Regulations must be filed within a period of six months from the date of filing of the foreign application. Therefore, if any or all of the required priority information (as listed above: a request in writing, the foreign application number, the name of the country and the filing date) is not provided, it cannot be rectified by the Office after the expiry of the six-month period specified in subsection 29(1) of the Act.

If the Office is advised that a clerical error was made in the priority request or priority information concerning the name of the country, the application number, or the filing date of the earlier application, the Office may permit an amendment to correct the clerical error appearing in the priority information under section 20 of the Act either before or after the six-month period specified in subsection 29(1) of the Act.

Foreign country

The countries in or for which an earliest application may serve as the basis for priority are as follows:

• any country that is a member of the Union for the Protection of Industrial Property constituted under the Paris Convention;
• any member of the World Trade Organization (established by Article 1 of the WTO Agreement);
• Benelux (since the Uniform Benelux Design Law came into effect); and
• any country for which there is an international deposit in the International Bureau of the World Intellectual Property Organization (WIPO) made under the Hague Agreement. In this case, the request must indicate that the basis for priority is an international deposit and must name the country or countries for which it has been filed. Wording such as the following is suggested: "International deposit for (name of country/ies)."

The Office will accept the name of the foreign country, e.g., FRANCE, or the two letter code, e.g., FR, from the WIPO standard (Standard ST.3). The WIPO code list is available through the WIPO website.

Note: The European Community is a member of the WTO and a priority request may be based on an application filed with the OHIM (Office for Harmonization in the Internal Market) for a European Community design. In this case, the priority request must be clear that the application was filed for the European Community.

3.4.3 Priority right in respect of only certain figures in the drawings

In the case of an industrial design application with a priority claim where the applicant specifies that priority is claimed with respect to only certain figures in the application (not all figures):

• If all of the figures in the application are considered to disclose the same design (either one design or variants), the priority right is considered to apply to the entire application, i.e., the entire Canadian application is deemed to have the same force and effect as if filed on the filing date of the priority application.
• On the other hand, if the figures in respect of which priority has been claimed disclose a design that is substantially different from the design disclosed by the other figures, the latter figures must be removed from the application and could be made the subject of a divisional application. The priority right is considered to apply to the "parent" application but would not apply to the divisional, i.e., the divisional is not deemed to have the same force and effect as if filed on the filing date of the priority application. The filing date of the divisional application would be the same as the filing date in Canada of the parent.

3.4.4 Priority right in the case of citation of a pending design

If prior to the registration of a design with a priority claim another application is filed for a design, which is considered to be similar (a citation), the Office will notify the applicant requesting priority that a similar pending design exists and will also request a certified copy of the foreign application and a certificate from the foreign office showing the date of filing in that country (refer to Section 20.2 of the Industrial Design Regulations).

If the certified copy shows that the foreign application does not include all of the figures shown in the Canadian application but those figures disclose variants, the priority will apply to the entire Canadian application.

If the certified copy shows that the foreign application relates to a different design than that of the Canadian application, the priority right will not apply to the Canadian application.

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