Under recent legislative amendments to the Canadian Patent Rules, the tariff of official fees payable to the Canadian Patent Office in respect of patent applications and issued patents will increase starting January 1, 2024.
The official fees significantly increase in some cases, with some tariff items increasing from 25 per cent and up to 36 per cent. A comparison of current standard official fees and the new increased fees for some common payments are shown below:
|
Tariff Item |
2023 fee* |
2024 fee* |
% increase |
|
Application filing fee or national entry fee |
$421.02 |
$555 |
31.8 |
|
Examination fee |
$816.00 |
$1,110.00 |
36.0 |
|
Excess claim fee for each claim over 20, payable with examination fee if >20 claims when requesting examination or at time of final fee if then > 20 claims |
$100.00 |
$110.00 |
10.0 |
|
Expedited examination |
$526.29 |
$694.00 |
31.9 |
|
Request for continued examination (RCE) fee |
$816.00 |
$1,110.00 |
36.0 |
|
Final fee (i.e. issue fee due after Notice of Allowance) |
$306.00 |
$416.00 |
31.9 |
|
Fee for each page of description, claims & drawings over 100, payable with the final fee |
$6.12 |
$8.00 |
30.7 |
|
Re-instatement fee |
$210.51 |
$277.00 |
32.1 |
|
Maintenance fees (for each of the 2nd, 3rd, & 4th anniversaries from the filing date) |
$100.00 |
$125.00 |
25.0 |
|
Maintenance fees (for each of the 5th, 6th, 7th , 8th & 9th anniversaries from the filing date) |
$210.51 |
$277.00 |
32.1 |
|
Maintenance fees (for each of the 10th, 11th, 12th, 13th, & 14th anniversaries from the filing date) |
$263.14 |
$347.00 |
31.9 |
|
Maintenance fees (for each of the 15th, 16, 17th, 18th & 19th anniversaries from the filing date) |
$473.65 |
$624.00 |
31.7 |
*All fees above for standard (non-small) entities, and in
Canadian dollars
A complete comparison of tariff items under the current tariff and the amended tariff, for both regular entities and "small entities" can be found here .
A cost-saving recommendation for most applicants - pay future fees early before new tariff takes effect.
It is possible to pay official fees due after January 1, 2024 (such as maintenance fees and examination fees) now, under the current tariff, and doing so can save hundreds and in some cases thousands of dollars for most applicants.
For example, requesting examination can be deferred for up to four or five years from the filing date for patent applications filed in Canada1. However, an applicant can save $294 or 36 per cent off the examination fee by requesting examination before January 1, 2024.
In another example, maintenance fees must be paid in Canada each year for the life of the patent, starting from the second anniversary of the filing date. Maintenance fees may be prepaid any time before their due date, and therefore significant savings can be realized by prepaying future maintenance fees before January 1, 2024. A patentee paying all annual maintenance fees (i.e. the second to the 19th anniversary maintenance fees) under the new tariff would pay a total of $6740; in contrast, the patentee would only pay a total of $5136 if all the maintenance fees were paid before January 1, 2024 under the current tariff, resulting in a total savings of $16042.
Applicants newly qualifying as a "small entity" under the new broadened definition may save more under new fee tariff.
In another important change, the definition of "small entity" starting January 1, 2024 is broadened to include an entity that has fewer than 100 employees, from the current definition which defines a "small entity" to include an entity that has only 50 employees or less3.
Under the current tariff, standard official fees are discounted by 50 per cent for applicants that meet the definition of small entity. Notably, most official fee increases for standard fees under the new tariff are disproportionately higher compared to the official fee increases for small entity fees under the new tariff. Thus while applicants that qualify as a small entity under the current definition would still save more by paying future official fees prior to January 1, 2024 under the current tariff, applicants that qualify as a small entity under the new broadened definition but not under the current definition may wish to wait until after January 1, 2024 to claim small entity status and pay small entity fees under the new tariff in order to save considerably more.
Some caution, however, should be exercised when determining whether an applicant is entitled to pay official fees at the small entity rate under the broadened definition. Canadian Courts have clarified that entity status is determined only once, when the patent regime is first engaged, and that subsequent fees must be paid based on this initial determination, notwithstanding the fact that it may change after the filing of an application or during the life of the patent4.
Therefore, an applicant intending to take advantage of the discounted small entity fees under the new tariff must determine that it had employed less than 100 employees at the filing date of a direct Canadian application or at the Canadian national phase entry date of an international PCT application5. For instance, an applicant that currently employs less than 100 employees and that filed a direct Canadian application before January 1, 2024 must first determine the number of employees it had when the application was filed in order to determine whether it is entitled to small entity fee discounts under the current or new tariff. If the applicant had 50 employees or less and otherwise met the current definition of small entity at the application filing date, it can claim small entity status and pay official fees at the small entity rate under the current tariff. If the applicant had between 51-99 employees and otherwise met the small entity definition at the application filing date, then it can claim small entity status after January 1, 2024 under the broadened definition and pay official fees at the small entity rate under the new amended tariff.
Note that an applicant that qualifies as a small entity under the new broadened definition but not under the current definition and has already made one or more payments to the Canadian Patent Office at the standard rate, will typically not be entitled to claim a partial refund of patent fees which were paid prior to January 1, 2024. This is because the amendments to the Patent Rules which come into force January 1, 2024 and introduces the broadened small entity definition do not have retroactive effect prior to January 1, 2024. Moreover, Section 139 of the Patent Rules provides only a very narrow list of fees that may be refunded. While subsection 139(h) does include provision for the Patent Office to refund fees for: "(h) any overpayment of fees," due to the applicant/patentee being a large entity at the time of payment, such would thus not constitute an "overpayment of fees."6
For more information or for clarification as to how you may possibly avoid the increased fees coming into force January 1, 2024, feel free to reach out to the authors.
Complete comparison of tariff items under the current and amended tariff
Part 1: fee in respect of extension of time
|
Item |
Description |
Amount ($) |
|---|---|---|
|
1 |
Fee for applying for an extension of time, in respect of each period of time referred to in the application for an extension. |
200.00 277.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Part 3: fees in respect of applications for a patent
|
Item |
Description |
Amount ($) |
|---|---|---|
|
6 |
Application fee |
|
|
210.51 225.00 |
|
|
421.02 555.00 |
|
|
7 |
Late fee under subsection 27(7) of the Act |
150.00 150.00 |
|
8 |
Fee for maintaining an application for a patent in effect |
|
|
||
|
50.00 50.00 |
|
|
100.00 125.00 |
|
|
||
|
100.00 100.00 |
|
|
210.51 277.00 |
|
|
||
|
125.00 125.00 |
|
|
263.14 347.00 |
|
|
||
|
236.83 253.00 |
|
|
473.65 624.00 |
|
|
9 |
Late fee under subsection 27.1(2) of the Act |
150.00 150.00 |
|
10 |
Fee for examination of an application for a patent |
|
|
||
|
||
|
100.00 110.00 |
|
|
204.00 277.00 |
|
|
||
|
408.00 450.00 |
|
|
816.00 1,110.00 |
|
|
||
|
50.00 55.00 |
|
|
100.00 110.00 |
|
|
11 |
Late fee under subsection 35(3) of the Act |
150.00 150.00 |
|
12 |
Fee to advance an application for a patent out of its routine order |
500.00 694.00 |
|
13 |
Fee for continued examination of an application for a patent |
|
|
408.00 450.00 |
|
|
816.00 1,110.00 |
|
|
14 |
Final fee |
|
|
||
|
153.00 169.00 |
|
|
306.00 416.00 |
|
|
6.12 8.00 |
|
|
||
|
50.00 55.00 |
|
|
100.00 110.00 |
|
|
15 |
Fee for reinstatement of an application deemed to be abandoned, in respect of each failure to take an action |
210.51 277.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Part 4: fees in respect of international applications
|
Item |
Description |
Amount ($) |
|---|---|---|
|
16 |
Transmittal fee for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT |
315.77 416.00 |
|
17 |
Search fee for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT |
1,684.12 2,220.00 |
|
18 |
Additional fee for conducting a search under Article 17(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention |
1,684.12 2,220.00 |
|
19 |
Preliminary examination fee for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT |
842.06 1,110.00 |
|
20 |
Additional fee for an international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention |
842.06 1,110.00 |
|
21 |
Basic national fee |
|
|
210.51 225.00 |
|
|
421.02 555.00 |
|
|
22 |
Fee for reinstatement of rights |
210.51 277.00 |
|
23 |
Additional fee for late payment under subsection 154(4) of these Rules |
150.00 150.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Part 5: fees in respect of patents
|
Item |
Description |
Amount ($) |
|---|---|---|
|
24 |
Fee for requesting the correction of an error under subsection 109(1) of these Rules, for each patent referred to in the request for correction |
210.50 277.00 |
|
25 |
Fee for maintaining the rights accorded by a patent in effect |
|
|
||
|
50.00 50.00 |
|
|
100.00 125.00 |
|
|
||
|
100.00 100.00 |
|
|
210.51 277.00 |
|
|
||
|
125.00 125.00 |
|
|
263.14 347.00 |
|
|
||
|
236.83 253.00 |
|
|
473.65 624.00 |
|
|
26 |
Late fee under subsection 46(2) of the Act |
150.00 150.00 |
|
27 |
Additional fee under subparagraph 46(5)(a)(iii) of the Act |
210.51 277.00 |
|
28 |
Fee for filing an application to reissue a patent |
1,684.12 2,220.00 |
|
29 |
Fee for a disclaimer |
100.00 125.00 |
|
30 |
Fee for re-examination of one or more claims of a patent |
|
|
1,052/57 1,124.00 |
|
|
2,105.14 2,775.00 |
|
|
31 |
Fee for presenting an application under section 65 or 127 of the Act |
|
|
2,631.43 3,468.00 |
|
|
263.14 347.00 |
|
|
32 |
Fee to advertise an application under section 65 or 127 of the Act on the website of the Canadian Intellectual Property Office |
210.51 277.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Part 6: fees in respect of registration of documents or recording of transfers
|
Item |
Description |
Amount ($) |
|---|---|---|
|
33 |
Fee for requesting the registration of a document relating to a patent or an application for a patent, for each patent or application for a patent to which the document relates |
100.00 125.00 |
|
34 |
Fee for requesting the recording of a change of name, for each patent or application for a patent to which the change of name relates |
100.00 125.00 |
|
35 |
Fee for requesting that a transfer be recorded under section 49 of the Act, for each patent or application for a patent to which the transfer relates |
100.00 125.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Part 7: fees in respect of information or copies
|
Item |
Description |
Amount ($) |
|---|---|---|
|
36 |
Fee for requesting a certified copy in paper form |
|
|
35.00 44.00 |
|
|
1.00 |
|
|
37 |
Fee for requesting a certified copy in electronic form |
|
|
35.00 44.00 |
|
|
10.00 13.00 |
|
|
38 |
Fee for requesting a non-certified copy in paper form, for each page |
|
|
0.50 1.00 |
|
|
1.00 |
|
|
39 |
Fee for requesting a non-certified copy in electronic form |
|
|
10.00 13.00 |
|
|
10.00 13.00 |
|
|
10.00 13.00 |
|
|
40 |
Fee for requesting that the Patent Office provide information concerning the status of a patent or an application for a patent, for each patent or application for a patent |
15.00 19.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Transitional provisions
|
Item |
Description |
Amount ($) |
|---|---|---|
|
1 |
Fee for maintaining in effect the rights accorded by a patent granted on the basis of a category 1 (ie a patent application for which the filing date is before October 1, 1989) |
|
|
||
|
50.00 50.00 |
|
|
100.00 125.00 |
|
|
||
|
100.00 100.00 |
|
|
210.51 277.00 |
|
|
||
|
125.00 125.00 |
|
|
263.14 347.00 |
|
|
||
|
236.83 253.00 |
|
|
473.65 624.00 |
Legend:
- Amounts in black are current 2023 tariff charges currently in effect.
- Amounts in red are tariff charges that will be in effect starting January 1, 2024.
- All fees in CAD.
Footnotes
1. For patent applications filed in Canada before October 30, 2019, examination fees must be paid within five (5) years of the filing date of a direct Canadian filing or the international filing date of a PCT national phase entry application; for patent applications filed after October 30, 2019, examination fees must be paid within four (4) years of the filing date of a direct Canadian filing or the international filing date of a PCT national phase entry application.
2. These calculations do not consider the effect of inflation and future changes in the official fee tariff, and therefore the actual cost savings may be different.
3. The current small entity definition also applies to entities that are a university, but not to: an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees; or an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has more than 50 employees.
4. Dutch Industries Ltd. v. The Commissioner of Patents, Barton No-Till Disk Inc, and Flexi-Coil Ltd. (2001 FCT 879), Barton No-Till Disk Inc. v. Dutch Industries Ltd (2003 FCA 121)
5. The sole exception would appear to be limited to the case under subsection 122(3) of the Patent Rules where, a person other than the patentee files a request for re-examination of an issued patent. The person requesting re-examination meets the expanded small entity condition under the new Tariff when that person is, on the date of the request (and not on the date of the filing of the patent) an entity that has fewer than 100 employees or less or is a university, other than an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 or more employees.
6. See §10.02.02 of the Canadian Manual of Patent Office Practice confirming that "If a small entity declaration is submitted after a standard fee is paid, but before the fee-payment deadline, the standard fee payment will not be considered an overpayment, and a refund of the difference between the standard and small fee amounts will not be provided for that particular payment."
Read the original article on GowlingWLG.com
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
