- within Wealth Management and Compliance topic(s)
- with Senior Company Executives, HR and Finance and Tax Executives
- with readers working within the Healthcare industries
In many jurisdictions, patentee's must pay fees to maintain their patent or patent application. However, the process varies by jurisdiction. This article provides an overview of a patentee's obligations for Canadian patents and patent applications.
When are maintenance fees due?
Maintenance fees must be paid annually, for both patent applications and issued patents. The first payment is due before the second anniversary of the filing date.
How much are the fees, and who pays them?
Although due annually, the maintenance fee amount depends on the age of the patent/application, with fees increasing over time. For fees due in 2026, Canada's annual maintenance fees are as follows (in CAD):
- For anniversary year 2/3/4 - $134.02
- For anniversary year 5/6/7/8/9 - $297.00
- For anniversary year 10/11/12/13/14 - $372.05
- For anniversary year 15/16/17/18/19 - $669.05
- For anniversary year 20 – $1,027.00
These amounts assume a 'standard' entity status. Certain patentees may qualify as a 'small entity,' and be eligible for a reduced maintenance fee amount (roughly 35-45% of the above fees).
In addition, the annual fee amount will typically increase each year, under a process called the "annual fee adjustment." The amount of the increase will depend on the Consumer Price Index (CPI) for Canada. The Canadian Intellectual Property Office will post both current and upcoming maintenance fee rates on its website (here).
Will I get reminders, and what happens if I miss a deadline?
The Canadian Intellectual Property Office will not send you a reminder of upcoming deadline. The onus is placed on a patentee to track these deadlines, and/or to retain the services of a patent agent or patent annuity service to track it on their behalf.
If a maintenance fee is not paid by the deadline, it could lead to irrevocable abandonment of the patent application. Fortunately, this does not happen right away, nor without notice to the patentee.
After a missed deadline, the Canadian Intellectual Property Office will send out a "Commissioner's Notice" advising of the failure to pay the required maintenance fee (or of an insufficient payment amount) and setting out a deadline for late payment of the maintenance fee. This Commissioner's Notice is an important document, as it is the sole notice that will be provided by the patent office of the missed payment. It also acts as a warning that failure to pay by the late fee deadline can lead to loss of patent rights.
Missed maintenance fee payments can be remedied, but the deadline to do so is important. Fees can be paid during a "late fee" period, which is calculated as the later of:
- Six months from the original maintenance fee deadline, or
- Two months from the date of the Commissioner's Notice advising of the missed payment.
The failure to pay the missed maintenance fee (as well as a 'late fee') by this deadline causes the application to be deemed abandoned, or the patent to be deemed expired. This designation can only be corrected in select circumstances.
In addition, after six months from the original maintenance fee deadline certain third-party rights may become available. Third-party rights may act as a potential defence to later allegations of patent infringement. Therefore, ensuring timely payment of maintenance fees is essential to maintain the full scope of protection for your invention.
How do I revive my patent or application?
Once a patent/application has been deemed abandoned or expired, it can be revived in only select circumstances. Specifically, it has to be shown that the failure to pay the maintenance fee (and late fee) by the late fee deadline arose despite the patentee showing the necessary due care required by the circumstances.
For example, the maintenance fee payment may have been missed due to a technical communication error resulting in the patentee not receiving the Commissioner's Notice, or the maintenance fee payment may have been made but inadvertently mis-entered. A patentee must submit the full circumstances that led to the error to the Commissioner of Patents, who will determine if the due care standard was met.
This has been applied by the Canadian Intellectual Property Office as a difficult test to meet, and all entities involved with the patent (e.g., the patentee, their patent agents, and any annuity services) must establish that they exhibited due care.
Establishing that 'due care' was met is known to be difficult, and the majority of due care submissions are rejected by the Commissioner of Patents. A register of decisions is made available to the public (here).
Conclusion
Given the difficulty associated with reviving a patent/application after deadlines are missed, it is important that patentees take all possible steps to pay maintenance fees by the anniversary date. Patentees should also take steps to ensure that they are properly monitoring for any Commissioner Notices regarding missed payment deadlines, and that any notices are acted upon promptly if received, so that a late payment can be made without having to satisfy the stringent due care criteria.
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.
