In Canada, annual maintenance fees must be paid for a patent or patent application starting from the second anniversary of the filing date. These annual maintenance fees are often referred to as annuities in other countries.
Maintenance fees are actually paid in advance of the year for which the fee is due. For example, the maintenance fee due on the second anniversary is in respect of the third year, and so on over the entire life of the patent or patent application. Thus, the final maintenance fee is due on the 19thanniversary of the filing date, in respect of the 20thyear, after which the patent expires.
For Canadian national entries of PCT applications, the international filing date of the PCT application is the Canadian filing date. Although the national entry deadline is 30-months from the earlier of the priority date or international filing date, a 12-month extension is available in Canada upon payment of an additional fee. Thus, it is possible for a national entry to be made in Canada after the second anniversary of the Canadian filing date has already passed. In that case, any previously due maintenance fees must be paid upon filing the national entry to avoid immediate abandonment of the application.
Who Can Submit Maintenance Fee Payments?
Payment of maintenance fees on patent applications can only be made by a resident agent of record on the case. A courtesy reminder is provided by the CIPO before the second anniversary of the filing date, but no subsequent reminders are provided. It is the responsibility of the applicant to maintain records of upcoming maintenance fee due dates and ensure that maintenance fees are paid on time.
Most agents maintain some type of reminder system and provide notification to their clients in advance of the due date, unless specifically requested not to do so. These types of instructions are sometimes given when a third party annuity payment service is used to monitor and pay all annuities and maintenance fees due on an international portfolio. In cases where a third party annuity payment service is used, instructions must still be provided by the service to the resident agent of record to pay the maintenance fees on pending applications. Once a patent is granted, anyone can pay the maintenance fees.
What is the Maintenance Fee Amount?
The official fees are standardized for both patents and patent applications, but increase over time. The table below summarizes the fee amounts.
Basic maintenance fees (if paid on or before the anniversary of the filing)
On or before
2nd, 3rd, and 4th anniversary of the filing
5th, 6th, 7th, 8th and 9th anniversary of the filing
10th, 11th, 12th, 13th and 14th anniversary of the filing
15th, 16th, 17th, 18th and 19th anniversary of the filing
Fees are reduced by 50% for small entities. The determination of whether or not an applicant qualifies as a small entity is made only once, on the Canadian filing date. A small entity is defined in subsection 3.01(3) of the Patent Rules.
What happens if you miss a maintenance fee payment?
The agent of record will receive notice that the patent or patent application has been abandoned. However, you can have your patent or patent application reinstated within 12 months from the date of the missed maintenance fee payment, as long as you pay the maintenance fee together with the reinstatement fee. If you miss the 12-month reinstatement period, the application is considered “dead”, without possibility of reinstatement.
It is possible for correspondence from the CIPO concerning missed maintenance fee payments to go astray. Some causes are errors due to incorrect addressing by the CIPO, postal service errors, or mail handling and docketing errors on the part of the agent of record. It is prudent to obtain a status report from the CIPO on an annual basis to ensure that no inadvertent abandonment of your patent or patent application has occurred in the preceding year. This provides time to reinstate the application within the 12-month reinstatement period to avoid the possibility of loss of patent rights.
The management of patent maintenance fees can be challenging and time-consuming; however, registered patent agents like Brunet & Co. employ specialized systems and processes to ensure that domestic and foreign clients are able to maintain their patent rights with minimal effort and risk throughout the patent life cycle.