Publication date: April 20, 2009
Effective as of: June 8, 2009
This notice replaces the Patent Practice Notice entitled Payment of fees: General authorization to charge a deficiency to deposit accounts and credit cards and the Trademarks Practice Notice entitled Payment of fees: general authorizations to charge deficiencies to deposit accounts and credit cards. This Practice Notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation. This notice should also be read in conjunction with the CIPO Practice Notice entitled Fee Payment Practice of the Canadian Intellectual Property Office. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.
A decision of the Federal Court of Canada, Government of the U.S.A. et al. v. the Commissioner of Patents (T-1995-04) addresses broad authorization statements to debit additional sums of money needed to effect payment of fees when there is a clear intent to pay.
In the processing of a fee payment, if there is a clear and obvious intent to pay a fee yet the submitted amount is deficient, and if the authorized payer has included a general authorization statement to charge any fee deficiency to a deposit account or credit card, CIPO will charge the deposit account or credit card the appropriate fee, assuming there are sufficient funds.
It is important to note that the inclusion of a general authorization statement when making a fee payment does not exempt the client from taking any other action required to fulfill the conditions required pursuant to the relevant statutes and regulations. Therefore, in situations where paying a fee is not the only action required, clients should ensure that all other appropriate actions have been taken.
Please note that CIPO will not speculate as to which fee the payment is intended to cover. In spite of a general authorization statement, if the client's intention is unclear, CIPO may not process the fee payment. Therefore, it is the client's responsibility to provide CIPO with as much information as possible regarding to the fee payment submitted.
Should a client wish to include a general authorization statement in the covering correspondence sent by mail, facsimile or hand-delivery, CIPO recommends that the following wording be used in conjunction with the CIPO Fee form:
Should the fees submitted with this letter be insufficient to cover all of the fees for which payment is explicitly or implicitly requested by this letter, CIPO is authorized to charge the amount of the insufficiency using one of the payment methods specified on the accompanying Fee form.
As indicated above, the inclusion of a general authorization statement when making a fee payment does not exempt the applicant/patentee from taking any other action required to fulfill the conditions required pursuant to the Patent Act and Patent Rules.
For instance, in order to reinstate an application that has been deemed abandoned for failure to pay a maintenance fee, the applicant is required to provide CIPO not only with payment of the past due maintenance fee and of the reinstatement fee, but also with a clear and explicit request for reinstatement.
Furthermore, CIPO will not speculate as to the entity size to which a payment relates. When making a fee payment, it is important to clearly indicate whether the applicant/patentee is paying a small entity fee or a standard fee.