Rules amending the Patent Rules account for inaccurate maintenance fees published by CIPO

The Canadian Intellectual Property Office (“CIPO”) mistakenly published incorrect maintenance fee details, indicating that fees for the second, third and fourth anniversary small entity maintenance fees were fixed at $50, rather than $56.21. This discrepancy arose due to the requirements of the Service Fees Act, which mandates adjustments for inflation. The accurate fee, factoring in these adjustments, stands at $56.21.

In order to safeguard applicants and patentees against inadequate fee payments caused by erroneous information provided by the Commissioner of Patents (“Commissioner”), Rules Amending the Patent Rules (“Rules”) were hastily registered on March 25, 2024.

The Rules will amend paragraphs 3(4)(c) and (d) to recite:

(c) the applicant or patentee identifies the source of the erroneous information that was relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient, unless the Commissioner considers that the circumstances do not justify requiring the statement and the application; and

(d) the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made, unless the Commissioner waives payment of the difference under section 139.1.

                        [emphasis added]

Subsection 3(4) of the amended Rules is designed to address instances where fee payments fall short due to erroneous guidance from the Commissioner. This revised subsection empowers the Commissioner to waive the need for an extension of time application and to identify the origin of erroneous fee-related information.

Moreover, the Rules will introduce paragraphs 139.1 to recite:

Waiver — paragraph 3(4)(d)

139.1 (1) In the case where the Commissioner considers that the circumstances do not justify requiring the statement and the application referred to in paragraph 3(4)(c), the Commissioner is authorized to waive, in favour of the applicant or patentee, payment of the difference referred to in paragraph 3(4)(d) if the Commissioner considers that the circumstances justify the waiver.

Additional waiver

(2) In the case where the Commissioner waives payment under subsection (1), the Commissioner is also authorized to waive, in favour of any applicant or patentee, payment of the difference between the amount specified in the erroneous information provided by the Commissioner and the amount that should have been specified if

(a) the Commissioner provided the same erroneous information concerning the amount of the fee in question;

(b) the period of time for the payment of the fee has not expired;

(c) the payment of the insufficient amount is made not later than the earlier of the day that is four months after the day on which the Commissioner issues the waiver under subsection (1) and the day fixed by the Commissioner; and

(d) the Commissioner considers that the circumstances justify the waiver.

Non-application of subsection 3(1)

(3) Subsection 3(1) does not apply to the time referred to in paragraph (2)(c).

The introduction of paragraph 139.1 grants the Commissioner the authority to exempt applicants or patentees from covering the discrepancy between the paid amount and the correct fee in cases of insufficient payments arising from misinformation provided by the Commissioner. Additionally, new subsection 139.1(2) enables the Commissioner to establish a transition period of up to four months subsequent to the waiver specified in subsection 139.1(1), ensuring that future fee payers who relied on the same inaccurate information are also relieved from paying the fee difference.

Under the amended Rules, on March 28, 2024, the Commissioner exercised the authority to waive the requirement to pay the difference between the amount already paid by patentees and applicants and the correct fee amount. Consequently, all patentees and applicants who have already paid the fee at $50 are not required to undertake any additional steps. The Commissioner has additionally endorsed a four-month transition period during which the disparity between the erroneously publicized fee of $50 and the correct fee of $56.21 will be disregarded.

Effective July 29, 2024, the maintenance fee for small entities will be formally established and enforced at $56.21. It is important to note, in cases where an applicant or patentee is issued a Commissioner's Notice or a Letter of Abandonment indicating a fee of $50 is required, with a deadline falling on or after July 29, 2024, it is crucial to recognize that the correct fee owed will be $56.21.

Please contact any member of our Intellectual Property & Technology Team if you want to know ‎more about ‎‎the Rules Amending the Patent Rules and how this may affect your maintenance or application fees. ‎