POTENTIAL FOR IMMEDIATE DUE DATES AS A RESULT OF CANADIAN PATENT OFFICE DELAYS IN PROVIDING PATENT MAINTENANCE FEE NOTICES.
i) Canadian Maintenance Fee Requirements
Under the Canadian Patent Act and Rules, maintenance fees are payable annually beginning on the 2nd anniversary of the application filing date to maintain pending patent applications and any resulting issued patents in force.
Where maintenance fees are not timely paid, the Commissioner is to forward a Notice, requiring payment of the past due maintenance fee with an additional late fee before the later of: six (6) months from the initial maintenance fee due date or two (2) months from the Notice mailing date to prevent application abandonment or patent expiry.
Reinstatement or revival of Canadian patent applications and patents which are abandoned or expired may possibly be effected by submitting: (i) the past due fees; (ii) a further prescribed or reinstatement fee; and (iii) reasons establishing that the failure to submit necessary maintenance and late fees occurred despite due care.
Any request to reinstate an abandoned patent application must be made within twelve (12) months of the abandonment date. Requests to revive expired Canadian patents must, however, be made within eighteen (18) months of the original maintenance fee due date.
ii) Delayed Mailing of Patent Office Notices
Following upgrades to its electronic records systems in July 2024, the Canadian Patent Office has experienced and continues to experience ongoing technical difficulties in the processing and generation of Patent Office correspondence.
As a result, Patent Office Notices requiring the submission of past due maintenance and late fees to prevent application abandonment/patent expiry have now been delayed for almost one (1) year.
There is a significant concern that once the Office’s new systems reach normal operation, the Office may proceed with the processing and forwarding of potentially thousands of Notices, providing only shortened periods of as little as two (2) months, by which to submit necessary fees to avoid abandonment or patent expiry.
iii) Immediate Action
For administrative/cost reasons, many applicants/patentees entrust docketing and payment of necessary maintenance fees to third party annuity service providers, independent from the agents of record. For cases where our office is not retained to directly pay maintenance fees, maintenance fees are typically remitted independently without notice or confirmation to our firm.
As Patent Office Notices potentially may provide only a two (2) month period to pay past due fees in order to avoid the irrevocable lapse of rights, we recommend:
- all clients proactively confirm with their annuity providers that required maintenance fees to maintain all Canadian patent applications/patents of interest have been timely paid and acknowledged;
- requesting any third party annuity service providers to provide a listing of any cases where their records indicate fee instructions have not been received or otherwise may be past due;
- ensuring that all application/patent ownership information is current and accurately reflected in the Canadian Patent Office records;
- ensuring prosecuting agents of record are provided with current instructing attorney address and e-mail contact particulars;
- confirming with applicants/patentees which specific applications/patents are to be maintained/allowed to lapse;
- for any applications/patents where fee payments may be in question, review online payment records/authorize the submission of contingent fee payments; and
- for cases where maintenance fees possibly may not have been timely paid, we suggest immediately proceeding with the submission of past due maintenance fees together with prescribed late fees, irrespective of whether a formal CIPO Notice requiring the late fee submission has been received.
For cases where we do not have maintenance fee responsibility, we remain pleased to arrange for the payment of any past due maintenance/late fees which could be of interest. If we are to take any action in this regard with respect to any specific patents or applications, please do not hesitate to contact our office.
If you have any questions with respect to Canadian maintenance fee requirements or to any Canadian patent matters in general, please do not hesitate to contact our office.
