Background — Timing of Search and Examination
Under the provisions of the Paris Convention and section 29 of the Industrial Design Act (the Act), an applicant for the registration of an industrial design may claim the benefit of priority based on the applicant’s first filing of the design in another country. In this case, the priority filing would have the same force and effect as if filed in Canada on that date, provided that the application is filed in Canada within six (6) months of the priority date. Under subsection 20(1) of the Industrial Design Regulations (the Regulations) a request for priority must indicate: the filing date of the foreign application; the name of the country in or for which the application was filed; and the foreign application number.
Whether or not an applicant claims the benefit of Convention priority, all applications are routinely examined by the Industrial Design Office in the order of the date that the examination fee is received. A claim to priority does not affect the order in which applications are processed as there is no requirement in the Act or the Paris Convention to search and examine priority-claiming applications before other applications. Rather, the benefit of a priority filing (i.e. having the same force and effect as if filed in Canada on that date) is that the Office will respect an applicant’s right to priority by ensuring that his application in Canada is not invalidated by reason of a filing in Canada for the design by a different applicant during the interval between the priority date and the Canadian filing date.
The search of prior art that is part of the examination of each application is conducted no earlier than six (6) months after the Canadian filing date. This timing is necessary in order to find any citable pending application (i.e. relating to an identical or substantially similar design) and to avoid the risk of registering a design that was not the first to file. Subsection 20(2) of the Regulations further requires that in the case where the Office examines a design for which there is a priority claim and there exists a citable pending design, the Office must advise the applicant and request a certified copy of the foreign application and a certificate from the foreign office showing the date of filing. If these documents do not support the claim, the result could be that the applicant is not entitled to priority, or that the priority date can be claimed in respect of only certain figures in the drawings and not to others.
If the Office conducts the search earlier than six (6) months from the Canadian filing date, there is a risk of registering a later-filed design. Moreover, there are no provisions in the Act or Regulations for the Office to correct this situation. For example, this could occur in the case of two priority-claiming applications for the same design, where one priority date is earlier than the other and where the documents provided pursuant to 20(2) of the Regulations do not support the earlier date of priority. See the following example where Design A and Design B are designs that are identical or closely resemble one another:
Design A: Filed in Canada on Sept 26, 2010 / Priority Date of July 6, 2010
(6 months after Canadian filing date = March 26, 2011 / 6 months after priority date = Jan 6, 2011)
Design B: Filed in Canada on March 25, 2011 / Priority Date of Sept 25, 2010:
- A search conducted on Jan 6, 2011 would not disclose Design B in the search results (although Design A would still be pending when Design B was filed).
- A search conducted on March 26, 2011 would disclose Design B in the search results. The Office would request the documents required by 20(2) of the Regulations.
- The aforementioned documents do not support the priority claim for Design A, but support the priority claim for Design B. The Office must register Design B with the earlier date of Sept 25, 2010.