Industrial Design Office Practices (Page 2 of 4)

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6. Examination

6.1 Industrial design subject matter

Industrial design means:

Features of shape, configuration, pattern, ornament, or any combination of these features that are applied to a finished article.

This includes:

  • designs applied to articles that are sold separately, even if they are not normally used on their own. For example, a zipper is sold as a separate article, but in normal use, it is part of another article such as a piece of clothing or a handbag;
  • designs applied to combined articles consisting of two or more components that come apart and are separate articles in themselves, provided that such components combine to make a finished article, e.g., tray with lid;
  • electronic icons embodied in a finished article;
  • designs applied to "sets" as defined in section 2 of the Industrial Design Act;
  • designs applied to finished articles assembled from a kit, as per the definition of "kit" in section 2 of the Industrial Design Act;
  • designs applied to portable buildings and structures—preformed, portable and delivered to purchasers as finished articles or in sections to be put together by a simple operation such as bolting; and
  • designs applied to articles of indefinite length such as fabric and wallpaper.

Industrial design does NOT apply to:

  • design features in isolation—protection can only be obtained for design features that have been applied to a particular finished article;
  • the functional characteristics of an article, e.g., what the article does and how;
  • methods or principles of construction, e.g., what the article is made of and how it is assembled;
  • ideas or general concepts—only a specific design applied to a particular finished article can be protected;
  • the colour of an article (Note: In the case of tartan designs, it is acceptable to submit additional colour drawings or photos to aid the examiner in more clearly discerning the pattern in order to assess registrability. However, such additional drawings or photos will not be part of the register, nor are the colours considered to be registrable design features);
  • features of an article that do not have a fixed appearance, e.g., holograms; and
  • buildings and structures to be constructed on site (not including structures that are preformed, portable and delivered to purchasers as finished articles, or in sections to be put together by a simple operation such as bolting).

6.2 Elements of an application

  • The prescribed fee
  • The prescribed form, which includes:
    • the name and address of the applicant;
    • a title that identifies the finished article to which the design has been applied;
    • a description identifying the features that constitute the design;
    • the name and address of the agent, if applicable; and
    • the name and address of a representative for service in Canada, if applicable.
  • Drawing(s) or photograph(s) of the design as applied to the finished article.

6.3 Prescribed fee

The prescribed fee for examination of an application to register a design according to the Tariff of Fees of the Industrial Design Regulations must be paid. There is a basic fee as well as an additional fee for each page of drawings in excess of 10 pages.

Refund

A refund for any fees submitted for an application or request will be issued only if a request for withdrawal is received from the client prior to any processing of the application or request.

6.4 Prescribed form

Although the exact wording and format of the prescribed form do not have to be followed, it is unacceptable to deviate from it in any way that is misleading or affects its substance.

The application must be clear and legible. If filed in paper form, the application must only be printed on one side on white paper that measures between 20 cm and 22 cm in width and between 25 cm and 36 cm in length.

The application must be either wholly in French or wholly in English.

6.4.1 Applicant name/address

The name and complete address of the applicant(s) must be included in the application.

6.4.2 Agent name/address

If the applicant has an agent, the agent's name and address is required.

6.4.3 Canadian representative for service

If the applicant's residence and place of business is not in Canada, the name and address of a representative for service in Canada is required.

6.4.4 Title identifying the article to which the design is applied

The title must clearly identify the finished article to which the design is applied. It should be identified by its common name generally known and used by the public.

Limited references to function or construction principles, including material, and registrable features will be accepted provided that:

  • the common name has been provided; and
  • such references are not excessive or long-winded.

With respect to the preceding paragraph, it is important to note that the protection afforded by registration appears to be limited to the specific article and any wording other than that which clearly identifies the article may limit protection (refer to section 11 of the Industrial Design Act ).

The title should identify the complete finished article and not its component parts.

When a design is embodied in an article having multiple functions or multiple independent parts that assemble to form one finished article, the title must clearly identify a single entity. Any title that implies that the application includes more than one design will not be accepted.

Titles should include the word "set" when a design is applied to multiple articles of the same general character ordinarily sold together or intended to be used together, e.g., "set of golf clubs."

For electronic icons, the title must identify the finished article in which the icon is embodied, e.g., "computer monitor," or "washing machine."

6.4.5 Description identifying the features that constitute the design

Design applied to the entirety or a portion of the article

The description must indicate whether the design relates to the appearance of the entire article or to the appearance of a portion of the article. Further, if the design relates only to a portion, that portion must be clearly identified.

Which visual features

The description must make clear which of the visual features shown in the drawings comprise the design. For example, does the design consist of all of the visual features of the article or only certain specific features, e.g., only shape.

Any feature of the design referred to in the description must be visible in the drawings or photographs.

An application may include a more detailed description provided that the additional detail accurately describes design features visible in the drawings or photographs.

Highlighting important features

It is acceptable to highlight a particular feature that is considered to be an important feature of the design.

Words or letters

When letters or words are included in the drawings or photographs as features of the design, any description of those features must relate to their visual appearance. Words and letters per se are not registrable subject matter of industrial design.

Variants

An application must relate to one design or to designs that constitute variants. To be accepted as variants, the designs must be very similar and possess the described features without substantial variation.

Sets

It should be clear in the description when the design applies to a set and the description should refer only to the design features common among all pieces of the set, e.g., the identical design or variants applied to each piece of the set. It is acceptable to indicate the location of these features on each piece of the set.

Figure reference

It is recommended that a figure reference be inserted at the end of the description when more than one drawing or photograph has been provided. The figure references should be restricted to describing the views seen in the drawings, i.e., perspective, front, back, top, bottom, left side, right side.

When an article is shown in an opened and closed position or in an extended and retracted position, the figure references should also make that clear, e.g., Figure l is a bottom view of the kettle and Figure 2 is a top view of the kettle showing the kettle with the lid in open position.

6.4.6 Examples of acceptable descriptions

Specific feature(s) applied to entire article

The design is the shape of the entire kettle as shown in the drawings.

Specific feature(s) applied to a portion

The design consists of the features of ornament of the handle of the spoon shown in the drawings.

The design is the shape of the back of the chair as shown in the drawings.

Specific feature(s) applied to a portion of the article—where drawings show design in solid lines and the rest of the article in stippled lines

The design consists of the features of shape of the portion of the chair shown in solid lines in the drawings.

All features applied to the entire article

The design consists of the features of shape, ornament, pattern and configuration of the entire bookcase as shown in the drawings.

The design is the visual features of the entire kettle as shown in the drawings.

The design is the visual features of the entire kettle shown in the drawings, whether those features are features of one of shape, configuration, ornament or pattern or are a combination of any of these features.

Highlighting important features

The design consists of the shape of the kettle shown in the drawings. The most significant feature of the design is the shape of the spout.

Variants

The design consists of the ornamentation applied to the handle of the spoon shown in the drawings. The drawings show two variants. Figures 1 and 2 show the first variant and Figures 3 and 4 show the second variant.

Sets

The design consists of the features of ornament applied to the handles of the set of cutlery articles shown in the drawings.

6.5 Drawings or photographs

6.5.1 General requirements

Show entire article

The drawings/photographs must show the entire finished article to which the design is applied, even though the design may relate to the appearance of only a portion of the article.

Show fully-assembled article

Only the fully assembled view of the finished article will be accepted. Parts that are not visible in the completely assembled article are not registrable and should not be shown or labelled.

Show article in isolation

The article must be shown in isolation. The only subject matter that will be accepted aside from the illustration of the article are figure numbers, the names of the views, and the applicant's name/signature. Such written matter must not hinder the clear disclosure of the article (see also section below entitled "One view showing environment").

Clearly disclose design features

The drawings/photographs must clearly disclose all the design features identified and described in the description portion of the application.

It is acceptable to submit photocopies or scanned images if the article and the features of the design are clearly shown.

Quality

Drawings and photographs must be clear and legible and must be presented so that the Office can directly reproduce them in black and white.

Photographs

Photographs should be numbered in sequence. It is suggested that the numbers be written, stamped or typed on the back of the photograph with permanent ink.

Views

The drawings/photographs must include a sufficient number of views to show the features of the design clearly and accurately.

Two-dimensional, plan and elevation views are accepted, and it is recommended that a perspective view of the design be included since it discloses the article in three dimensions.

Views of the article in open and closed, or extended and retracted positions, may be included when it is necessary to reveal design features visible when the article is used in those positions.

Flexible articles

Articles such as clothing and cushions that are flexible may be shown flat or as they appear in use, provided that the features of the design are shown clearly and accurately.

Sets

All pieces of the set must be shown in the drawings or photographs.

Variants

It is preferable to group views of each variant together (i.e., consecutively). A sufficient number of views are required for each variant to clearly and accurately disclose the design features.

6.5.2 Requirements for drawings only

Illustrating the design applied to the article

It is acceptable to illustrate the article in one of two ways:

  • Show the whole article in solid lines.
  • Show the design in solid lines, and show portions of the article that are not part of the design in stippled lines (stippled lines are broken lines formed by evenly spaced short dashes, evenly spaced dots, or evenly spaced and alternating short dashes and dots).
Shading techniques

Techniques that are used to better illustrate the shape of the design are acceptable provided they do not distort or hide the design. Shading should be consistently shown throughout the drawings. Shading should not be shown in any non-design portions of the article shown in stippled lines.

Transparency

This can be illustrated by the use of thin shade lines. Portions of the design and article that would be visible through the transparent section must be shown. Transparency should not be shown in any non-design portions of the article shown in stippled lines.

Indefinite length and/or width

To illustrate articles of indefinite length and/or width, it is necessary to use break lines. It should be obvious that the break lines are for illustrating a break in the article and do not form part of the design. Break lines may be shown with double sinusoidal lines, a sharp jagged line or a pair of angled straight parallel lines broken occasionally by a zigzag.

The drawings must show break lines in the article's length and/or width and the description should indicate that indefinite length is shown. In each case, a statement in the description must be included if the drawing contains indefinite length, or width, to indicate this. In the case of repeating three-dimensional (3D) features or repeating surface pattern, the description must also indicate that such features repeat consistently and at regular intervals in the portion's length (and/or width). See Annex B for sample illustrations of the following situations.

  • Articles of indefinite length with a constant cross-section, e.g., extrusions for mouldings or windows: regardless where in the article you cut, the cross-section is identical, and there is no surface pattern and no three-dimensional features.
  • Articles of indefinite length with a repeating surface pattern, e.g., ribbon with a repeating pattern: there is a repeating pattern on the surface of the article that does not affect the article's cross-section.
  • Articles of indefinite length and width with a repeating surface pattern, e.g., fabric with a repeating pattern not affecting the articles' cross-section: given that both length and width are indefinite, this may be shown in a different manner by a stippled line around the pattern to be repeated.
  • Articles of indefinite length with repeating three-dimensional (3D) features, e.g., a drainage track with repeating apertures: the cross-section is not constant throughout; however, the 3D features repeat at regular intervals throughout the article's length.
Variable length in a portion of the article

e.g., a distinct portion of the article is of variable length. A portion of an article that comes in more than one definite length differs from an article of indefinite length such as an extrusion, which is cut to measure. To illustrate variable length in a portion of the article, it is necessary to show break lines in the relevant portion. In addition, the description must indicate that variable length is shown. In the case of repeating 3D features or repeating surface pattern, the description must also indicate that such features repeat consistently and at regular intervals of the portion's length. See Annex B for a sample illustration.

  • The relevant portion has a constant cross-section, e.g., a broom with a handle of variable length: there is no repeating surface pattern and there are no repeating 3D features. Regardless of where in the portion's length you cut, the cross-section is identical.
  • The relevant portion has repeating surface pattern, e.g., geometric surface pattern on a broom handle: there is a consistently repeating pattern across the surface of the relevant portion, but the cross-section is constant.
  • The relevant portion has repeating 3D features, e.g., a paint roller with protruding shapes that repeat at regular intervals of the rolling surface: the cross-section of the relevant portion is not constant throughout; however, the 3D features repeat at regular intervals throughout its length.
Different types of views
Cross-sectional views

A cross-section may be included in order to better disclose described exterior features of the design.

Method to illustrate a cross-sectional view

  • The cut surface of the article may be shown either as solid black or as alternating black and white diagonal lines.
  • The location of the cross-sectional view should be marked on one of the conventional views using arrows and letters.
Fragmentary view

A fragmentary view may be included to show a portion of the design on a larger scale in order to better disclose small detail.

Methods to illustrate a fragmentary view

  • On a conventional view, mark with a circle the portion shown in the fragmentary view and number it with the same figure number as the figure showing the fragmentary view.
  • An arrow near a conventional view points to the area shown in the fragmentary view.
One view showing environment

The applicant may provide one view on a drawing that includes environment (meaning subject matter that is not part of the finished article and that is illustrated only for the purpose of showing the article in context) provided that:

  • the application contains more than one view and all other views show the article in isolation;
  • the environment is shown in stippled lines;
  • inclusion of the environment in the application helps to provide a better understanding of what are the features of the design and what is the finished article to which the design is applied; and
  • it is clear from the combination of the drawings, the description and the title what is the environment, what are the features of the design and what is the finished article to which the design is applied.

Note: The view that includes environment does not have to be the last view.

6.5.3 Bold wavy lines in drawings

Applicants are required to comply with subsection 4 of section 9.1 of the Industrial Design Regulations, which stipulates that drawings must show the design in well-defined solid lines and non-design portions of the article may be shown either in well-defined solid lines or well-defined stippled lines. The option of showing non-design portions in stippled lines provides applicants with a visual means of distinguishing between design and non-design portions of the article in addition to the written description.

Although the above option handles the majority of cases, there are exceptions that might warrant using an additional means to illustrate the distinction between design and non-design portions of the article. As a matter of office practice, the Office will accept the use of bold wavy lines in exceptional cases to define a boundary between the design and non-design portions of the article where the use of solid and stippled lines alone does not clearly show the design as applied to the article.

In cases where bold wavy lines are used, applicants must comply with the following requirements. Failure to comply may result in an objection from the examiner.

  • It must be clear what the bold wavy lines are illustrating, such that the description and drawings clearly indicate what are the design features and what are the portions of the article where the design resides.
  • Such lines in the drawings must clearly be bold and wavy, i.e., so that they are not confused with ordinary solid lines, stippled lines or break lines.
  • The description must include a statement clearly indicating that the bold wavy lines are not part of the design. Furthermore, since the Industrial Design Regulations do not provide for the use of bold wavy lines, it is recommended that the description explain what is illustrated or represented by the bold wavy lines in the drawings.

See Annex B for sample illustrations.

6.6 Originality

A design must be original in order to be entitled to registration. Section 7(3) of the Industrial Design Actstates that the certificate of registration is evidence of the originality of the design. Section 6 of the Actalso specifies that a design will not be registered if:

  • the design is identical to or closely resembles any other design already registered; or
  • the design was published more than one year prior to the date of filing in Canada.

If a search discloses the existence of an identical or substantially similar design, the examiner will issue a report raising an objection on the basis of lack of originality. A copy of the cited design and its title and description will be forwarded to the applicant. Unless the applicant can establish that the new design has original design features beyond those seen in the cited design, the objection will be maintained and a final report will be issued.

Over the years, the courts have set out principles that have been applied in reaching decisions about what constitutes an original design. To read more about these guiding principles, see Annex A.

6.7 Divisional and similar designs filed by the same applicant

6.7.1 More than one design

Section 10 of the Industrial Design Regulations requires that the application must relate to one design applied to a single article or set or to variants of one design applied to an article or set. If after examination it is considered that the application relates to more than one design, the applicant will be advised that the application must be limited to only one of the designs disclosed. The examiner will also advise the applicant that a separate application (commonly called a "divisional") may be filed for any of the other design(s). Note that the examination fee (Item 1 of the Tariff of Fees) is required for each divisional filed.

A divisional must be filed before the registration of the design in the initial application (commonly called the "parent"). It is the responsibility of the applicant to notify the Office when an application is being filed as a divisional of another application. A divisional application will have the same filing date as the parent application and the Office will register the parent and divisional(s) on the same date.

6.7.2 Co-pending applications

When the same applicant files two or more applications on the same date or on different dates for similar designs1 or related designs2, it is the responsibility of the applicant to notify the Office of such co-pending applications so that the Office can associate them and examine them together. Failure on the part of the applicant to notify the Office could result in missed associations and the registration of one or more such designs prior to the other(s), which in turn could result in the citation of one design against another.

1 Similar designs: designs that are so similar that one could be cited against the other.

2 Related designs designs usually in a series or grouping of an applicant’s designs in similar or identical classes; for example, designs where one is for the entire container, one is for just the handle portion of the same container, and one is for an accessory for the same container.

6.8 Amendment of an application

An application may be amended any time before registration. However, it is not acceptable to amend the application in a way that constitutes a substantial change to what has been identified as the design. In particular, changes to the description or drawings that describe or disclose a substantially different design will not be accepted.


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