Fee-for-service proposal—Trademarks and patents

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Consultation update

Changes on patent fee-for-service proposal

Stakeholder engagement

Beginning in June 2013, the Canadian Intellectual Property Office (CIPO) started pre-consultations with key organizations representing intellectual property (IP) agents, IP holders, and innovators, to obtain their input regarding changes to the Patent Act and Rules.

In February 2016, CIPO again met with stakeholders to discuss the changes proposed for the Patent Rules, including fee-related changes. During these informal discussions, CIPO requested feedback from the organizations and their members. The responses were analyzed, and helped shape CIPO's approach to making the amendments.

Consultations

Following the pre-consultations, CIPO launched, on June 6, 2016, its formal public consultation, as prescribed in the User Fees Act (UFA). CIPO posted the patent fee-for-service proposal on its website for 30 days, from June 6 to July 5, 2016, the official UFA notification period, and promoted it via its LinkedIn and Twitter accounts, website, as well as through letters and emails to key stakeholders.

During the notification period, CIPO received four submissions on the proposed changes to patent fee structure from various stakeholders. Two of the submissions were wholly supportive of the proposed changes with respect to patent fees. One submission raised a comment that was outside the scope of the UFA exercise. While an IP association expressed general support for the new fee structure, concerns were raised about a change peripheral to the proposal, with respect to the time limit of 6 months following grant of a patent for correction of obvious errors in the patent. As a result, CIPO will review the time limit as the Patent Rules continue to be amended.

Changes on trademark fee-for-service proposal

Stakeholder engagement

Consultations regarding amendments to the Trade-marks Regulations began in November 2013 with an email survey sent to a range of associations, as well as a major filer of trademarks in Canada. These pre consultations focused exclusively on whether CIPO should implement a fee-per-class system for trademark applications.

In April 2015, CIPO broadened its scope and discussed the overall proposed fee changes with the top trademark filers in Canada and, using input from this meeting, CIPO developed a fee-per-class system that would best serve Canadian filers. CIPO also met in spring 2015 with its stakeholders to gauge their reaction regarding the proposed regulations and fees. CIPO received positive feedback from these informal sessions. The responses were used to craft the drafting instructions required to make the amendments to the Regulations.

Consultations

Following the pre-consultations, CIPO launched, on June 6, 2016, its formal public consultation, as prescribed in the User Fees Act (UFA). CIPO posted the trademark fee-for-service proposal on its website for 30 days, from June 6 to July 5, 2016, the official UFA notification period. As well, CIPO undertook substantial promotion to raise awareness of the consultations, such as a social media campaign, web content publishing, and direct marketing.

During the notification period, CIPO received five submissions from various stakeholders on the proposed changes to the trademark fee structure. The majority of the comments were supportive of the proposed changes to the fees, although some issues raised were out of scope for the current UFA exercise.

CIPO received one complaint from an association regarding the proposal to merge the application and registration fees, as well as the proposed fee-per-class system, which the association stated could represent a larger cost to some trademark filers. A number of issues were also raised that were outside the scope of the consultation. During the 30-day resolution period, from July 5 to August 4, 2016, CIPO engaged this association with the aim of addressing its concerns, including a meeting in late July 2016 between association representatives and CIPO officials. CIPO shared information on why the proposed system would be beneficial to the majority of Canadian filers, while also making the Canadian marketplace more attractive to foreign investment. While CIPO did not engage specifically on any out-of-scope concerns raised by the association, it committed to continued consultation with them during the regulatory development process. By the end of the complaint-resolution period, the association declined to request that an independent panel be named to review the complaint. For further information, all the submissions can be found on the links below.

Moving forward

The next stage of the exercise prescribed in the User Fees Act (UFA) is the tabling of the fee-for-service proposals in both houses of Parliament for referral to the appropriate committee for further consideration. Following the tabling of the fee-for-service proposal for patents and trademarks in Parliament, the final step for approving the new fees and regulations is through the Gazette process via a Treasury Board submission.

Consultation comments received

Objective

Consult with Canadians on the proposed adjustments to the current trademark and patent fees and their related service standards. In 2014, the Patent Act, the Trade-marks Act and the Industrial Design Act were amended to allow Canada to join five international intellectual property (IP) treaties. This will provide Canadian businesses with a competitive advantage, thanks to a reduced administrative burden and harmonized IP procedures.

Why

Under the User Fees Act (UFA), federal departments that wish to make changes to their fees structure and related services must follow a specific process. This process involves consulting the public, responding to complaints and sending information for review in Parliament.

Who

Any Canadian individual or organization interested in trademark and patent fee structure.

What

The consultation focuses on the proposed changes to the Canadian Intellectual Property Office's (CIPO) fee structure that could be reviewed through the UFA process as listed below:

  • Trademarks:
    • a new application fee to merge the current application and registration fees
    • a new fee per Nice Classification for filing and renewal
    • an increased renewal fee
  • Patents:
    • new fees for:
      • a late payment of a filing fee
      • a late payment of a maintenance fee on an application or patent
      • a late request for examination of an application
    • changes to fee-based services for:
      • correcting an error in a patent
      • submitting an amendment for an application that was already allowed

Consultation documents

When

The User Fees Act breaks down the input submission process into three specific steps and provides timelines for each one.

Periods Number of days Dates
Publication of the discussion paper for fee-for-service proposal and submission period 30 days June 6 to July 5, 2016
Response and resolution periods 30 days July 6 to August 4, 2016
Independent advisory panel process period 40 days August 5 to September 13, 2016

How to participate

Only submissions received between June 6 to July 5, 2016, in English or French will be processed. Any submission received after this period will not be reviewed nor included in the submission to Parliament.

Please include both comments and complaints in your submission on the proposed new fees and their related service standards.

Email your submission to: ic.cipoconsultations-opicconsultations.ic@canada.ca. All electronic submissions will receive an automated receipt confirmation message.

The subject line of your email must be

  • Attention User Fees Act: Fee-for-service proposal—Trademarks; or
  • Attention User Fees Act: Fee-for-service proposal—Patents.

CIPO will respond to all complaints that:

  • contain a reason or an argument based on facts; and/or
  • mention problems about the application of the User Fees Act and the fee-for-service proposal.

CIPO will review your submissions in light of:

  • information received in other submissions on the same topic; and
  • the effects your submission could have on laws and policies.

CIPO will dismiss any submission that includes:

You will receive a written response for all submissions you may have before the end of the 30-day response period (July 6 to August 4, 2016) following the 30-day consultation period (June 6 to July 5, 2016).

If your submission is in the nature of a complaint, CIPO is committed to establishing clear lines of communication with you so that your complaint may be resolved, and replying to your complaint within an open and transparent consultation process. The response you may receive will explain CIPO's position towards the complaint. However, if you feel that you have not received a satisfactory response, you have the option of asking that your complaint be reviewed by an independent advisory panel. CIPO then has to establish the panel within the 10 days following the end of the resolution period. The panel then has 30 days to make its recommendations.

Please note that after the consultation period, a summary of comments received during that period will be posted on the CIPO website.

The input submission process under the User Fees Act is not legally binding for the Government of Canada. However, a summary of all submissions will be detailed in a report tabled in Parliament.

Contact us

By email at ic.cipoconsultations-opicconsultations.ic@canada.ca.

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