Different fees must be paid at different times during the patent application process as well as after the patent is granted to maintain the patent rights. The Canadian Intellectual Property Office funds its operations according to the cost recovery principle for patent application services. The proposed amendments to the Patent Rules do not change the amount of fees payable. However, some fees have been eliminated and there is a new late fee when a payment is not made and/or an action is not taken in due course. There are also changes in the fee payment deadlines and the elimination of fees for completing an application and for clear but unsuccessful attempts to pay the fee.
The current legislative regime does not contain a late fee. The proposed new regime proposes a late fee of $150. This will be applied when a payment and/or an action is not completed within the prescribed time limits.
The amount of the application fee (formerly known as the filing fee under the previous rules regime) remains the same under the new regulatory regime, at $400, or $200 for small entities. If the application fee is not paid at the time of filing, a notice will be sent and it will be necessary to pay that fee and the late fee ($150) within two months of the date of the notice. Otherwise, the application will be deemed to have never been filed. (See the document – Consultation Document - Filing requirements)
National phase entry fee for a patent cooperation treaty (PCT) application
The amount of the national phase application fee remains the same under the new regulatory regime, at $400, or $200 for small entities. The fee is required to complete the national phase application. This fee will not benefit from the new notice and late fee regime.
Fee for the examination of an application for a patent
The regulatory amendments propose to reduce the time limit for examination of an application from 5 years to 4 years. The amount of the fee will remain unchanged under the new regime, at $800, or $400 for small entities. If the request for examination has not yet been made when the time limit expires, a notice will be sent. The applicant then will have two months to request examination of the application and pay the fee for examination and the $150 late fee, failing which the application will be deemed to be abandoned. To reinstate the application, the applicant, within the 12-month period after the two-month time limit of the notice, must take the actions that should have been taken in order to avoid the abandonment, i.e. request examination of the application, pay the examination fee, pay the $150 late fee and pay the $200 reinstatement fee. This will also include a requirement to show due care, beginning 6 months after the due date to request examination until the time limit to reinstate. (See the document – Consultation Document - Abandonment and Reinstatement, Consultation Document – Third Party Rights and Due Care).
Maintenance fee – Patent application
The amount of maintenance fees, whether for a standard entity or a small entity, for a patent application will remain unchanged under the new Rules. In the event of non-payment of a patent application maintenance fee, the application will no longer be deemed automatically to be abandoned. A notice then will be sent requiring payment of the maintenance fee and the $150 late fee within two months of the date of the notice or within six months after the deadline (the later of the two). If the two fees are not paid before this second time limit, the application will be abandoned. To reinstate the application, a request for reinstatement and the $200 reinstatement fee will then be required in addition to the maintenance fee and the late fee. This will also include a requirement to show due care, beginning 6 months after the original due date of the maintenance fee until the time limit to reinstate. (See the document – Consultation Document - Abandonment and Reinstatement, Consultation Document – Third Party Rights and Due Care).
Maintenance fee – Patent
The amount of maintenance fees for a patent, whether for a standard entity or a small entity, will remain unchanged under the new Rules. In the event of non-payment of a patent maintenance fee, the date when the patent will be deemed to have expired will change. Under the current regime, the patent is deemed to have expired after the 12-month period following the due date of the fee. Under the new regime, a notice will be sent requiring payment of the maintenance fee and the $150 late fee within two months of the date of the notice or within six months after the due date (the later of the two). If both fees are not paid before this second time limit, the patent will be deemed to have expired six months after the due date of the fee. After the patent is deemed to have expired, it will be possible to apply to the Commissioner for a ruling that the patent has never been deemed to have expired by paying an additional fee of $200, in addition to the maintenance fee and the late fee, within the 12-month period after the six-month late period. If the fees are not paid and the requirement to show due care is not met after the final due date, the patent will be deemed to have expired retroactive to the first late date. (See the Consultation Document – Third Party Rights and Due Care, Consultation document – Deemed expiry and reversal of deemed expiry of patents)
Fee for completing the application
The current Rules require a $200 fee when the application is not completed according to the prescribed requirements. To complete the application, the applicant must provide the missing documents, fees and/or other requirements, as required, and pay the $200 fee.
Proposed new state
The $200 fee will be eliminated from the new Rules and the steps to complete an application will vary. The period to complete the patent application after its filing will be three months after a notice sent by the Commissioner (See Discussion Document – Compliant patent application). There will be no additional fee for completing the application. If the application is not completed within the time limit of the notice, the application then will be abandoned. The requirements will have to be completed to reinstate the application, including paying the $200 reinstatement fee.
Late Payment Fee for Clear but Unsuccessful Attempts to Pay the Fee
Currently, if there is a clear but unsuccessful attempt to pay the fee, the Office sends a notice requiring payment of the balance of the fee and a penalty of 50% of the balance of the unpaid fee or $50, whichever is greater.
Proposed new state
This regime, which is seldom used, will be replaced by the new late payment system and the late fees determined by the Act. This variable fee will be eliminated.
Refund of Fees
The proposed regulatory amendments maintain the same regime for refunds:
- this is a fee that may be refunded
- the refund is requested within three years after payment of the fee
It will also be possible to obtain a refund of the fee for correction of an error or the fee for reissuing a patent if the origin of the error or the insufficiency is the Commissioner's fault. The Office's intention is to refund these respective fees automatically, without a request by the patent holder, when the correction or reissue is completed.
Small entity vs. Standard entity status
The new Rules propose to maintain the 50% reduction for almost all fees related to patents, for applicants who meet the definition of small entities. For example, the standard fee for filing an application is $400 and the small entity fee is $200. The definition for the condition relating to small entity status remains the same. To pay the fees at this reduced rate, it is necessary to be in compliance with the regulatory requirements and file a small entity declaration signed before or with the payment of the fee. Once the declaration is filed, all subsequent fees may be paid according to small entity status. It is important to note that the declaration is made by the current applicant regarding the applicant at the time the application is filed. Thus, if the applicant at the time of filing satisfies the small entity condition and subsequently there is a change of applicant who does not satisfy the small entity condition, the applicant nonetheless has the right to maintain the declaration and pay the reduced fees.
Certain fees are fixed, regardless of entity status. For example:
- Late fee – $150
- Reinstatement fee – $200
- Request for advanced examination fee – $500
- Fee for filing an amendment after the notice of acceptance – $400
- Fee to request correction of an obvious error – $200
See the fee Schedule in the Rules for a complete list of fees.
For a better understanding of this subject, also see the legislative amendments proposed in Bills C-43 and C-59, which have not yet come into force in the Patent Act. You can also consult the draft public consultation documents concerning the proposed amendments to the Patent Rules, available on our website.
- Non-payment of the regulatory fee – Section 27(7) (not yet in force)
- Fees to maintain an application – Section 27.1 (not yet in force)
- Request for examination – Section 35 (not yet in force)
- Fees to maintain rights – Section 46 (not yet in force)
Proposed new Rules:
- Fees – Section 3
- Condition relating to small entity status – Section 4
- Refund of fees – Section 6
- Schedule II – Tariff of Fees