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Vol. 137, No. 13 — June 18, 2003
Registration
SOR/2003-208 5 June, 2003
PATENT ACT
Rules Amending the Patent Rules
P.C. 2003-864 5 June, 2003
Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12 (see footnote a) of the Patent Act as it read immediately before October 1, 1989, and section 12 (see footnote b) of the Patent Act, hereby makes the annexed Rules Amending the Patent Rules.
RULES AMENDING THE PATENT RULES
AMENDMENTS
1. The definition "application" in section 2 of the Patent Rules (see footnote 1) is replaced by the following:
"application" means, except as otherwise provided by these Rules, an application for a patent, but does not include an application for the reissue of a patent; (demande)
2. The Rules are amended by adding the following after section 3:
3.1 (1) Subject to subsection 6(1), if, before the expiry of a time limit for paying a fee set out in Schedule II, the Commissioner receives a communication in accordance with which a clear but unsuccessful attempt is made to pay the fee, the fee shall be considered to have been paid before the expiry of the time limit if
-
(a) the amount of the fee that was missing is paid before the expiry of the time limit;
(b) if a notice is sent in accordance with subsection (2), the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the date of the notice; or
(c) if a notice is not sent, the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the day on which the communication was received by the Commissioner.
(2) Subject to subsection 6(1) and unless the person making the communication did not provide information that would allow them to be contacted, if the Commissioner has received a communication in the circumstances referred to in subsection (1), the Commissioner shall, by notice to the person who made the communication, request payment of the amount of the fee that was missing together, if applicable, with the late payment fee referred to in subsection (1).
(3) Subsections (1) and (2) do not apply in respect of the fees set out in items 9 to 9.4 and 22.1 of Schedule II.
3. Subsection 13(2) of the Rules is replaced by the following:
(2) The members of the Examining Board shall be appointed by the Commissioner, and the chairperson and at least three other members shall be employees of the Patent Office and at least five members shall be patent agents nominated by the Intellectual Property Institute of Canada.
4. The heading before section 52 of the Rules is replaced by the following:
International Phase
5. The Rules are amended by adding the following after section 53:
53.1 The Commissioner shall act as an International Searching Authority and an International Preliminary Examining Authority in accordance with the Patent Cooperation Treaty and the Regulations under the PCT.
6. Section 55 of the Rules is replaced by the following:
55. (1) Fees payable pursuant to Rules 15 and 57 of the Regulations under the PCT shall be paid in Canadian currency.
(2) Money received under Rules 15 and 57 of the Regulations under the PCT shall be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and shall be paid out of that account for purposes in accordance with those Rules.
7. The heading before section 56 of the Rules is replaced by the following:
National Phase
8. The heading before section 58 of the Rules is repealed.
9. Subsections 88(3) and (4) of the Rules are replaced by the following:
(3) For the purposes of subsection (1), if the previously regularly filed application is for a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one country, the applicant may provide the Commissioner with the name of the authority with which the application was filed instead of the country of filing.
(4) For the purposes of subsection (1), if the previously regularly filed application is an international application, the applicant may provide the Commissioner with the name of the receiving Office with which the application was filed instead of the country of filing.
10. Item 1 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 1. | On filing an application under subsection 27(2) of the Act: | |
|
$ 200.00 400.00 |
11. Items 3 to 5 of Schedule II to the Rules are replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 3. | On requesting examination of an application under subsection 35(1) of the Act, | |
|
100.00 200.00 |
|
|
400.00 800.00 |
|
| 4. | On requesting the advance of an application for examination under section 28 of these Rules |
500.00 |
| 5. | On filing an amendment under subsection 32(1) of these Rules, after a notice is sent under subsection 30(1) or (5) of these Rules |
400.00 |
12. Subparagraph 6(a)(ii) of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 6. (a) |
|
6.00 |
13. Item 9 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 9. | Transmittal fee under Rule 14 of the Regulations under the PCT |
$ 300.00 |
14. Schedule II to the Rules is amended by adding the following after item 9:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 9.1 | Search fee under Rule 16 of the Regulations under the PCT |
1,600.00 |
| 9.2 | Additional fee under Rule 40 of the Regulations under the PCT |
1,600.00 |
| 9.3 | Preliminary examination fee under Rule 58 of the Regulations under the PCT |
800.00 |
| 9.4 | Additional fee under Rule 68 of the Regulations under the PCT |
800.00 |
15. Item 10 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 10. | Basic national fee under paragraph 58(1)(c) of these Rules, | |
|
200.00 400.00 |
16. Item 12 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 12. | On the filing of an application to reissue a patent under section 47 of the Act |
$1,600.00 |
17. Item 16 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 16. | On presenting an application to the Commissioner under subsection 65(1) of the Act, | |
|
2,500.00 250.00 |
18. Item 20 of Schedule II to the Rules is repealed.
19. Item 21 of Schedule II to the Rules is replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 21. | On requesting registration of a document under section 49 or 50 of the Act, or of the Act as it read immediately before October 1, 1989, or under section 37, 38, 39 or 42 of these Rules, for each patent or application to which the document relates |
100.00 |
20. Schedule II to the Rules is amended by adding the following after item 22:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 22.1 | Late payment fee under subsection 3.1(1) of these Rules | the greater of $50 and 50% of the amount of the fee that has not been paid |
21. Items 25 to 27 of Schedule II to the Rules are replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 25. | On requesting a copy in paper form of a document, for each page, |
|
|
0.50 1.00 |
|
| 25.1 | On requesting a copy in electronic form of a document, |
|
|
10.00 10.00 10.00 10.00 |
|
| 26. | On requesting a certified copy in paper form of a document, | |
|
35.00 1.00 |
|
| 26.1 | On requesting a certified copy in electronic form of a document, | |
|
35.00 10.00 10.00 |
|
| 27. | On requesting that the Patent Office provide information concerning the status of a patent application or patent, for each application or patent | 15.00 |
22. Items 30 to 32 of Schedule II to the Rules are replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 30. | For maintaining an application filed on or after October 1, 1989 in effect, under sections 99 and 154 of these Rules, |
|
|
||
|
$ 50.00 100.00 |
|
|
||
|
50.00 100.00 |
|
|
||
|
50.00 100.00 |
|
|
||
|
100.00 200.00 |
|
|
||
|
100.00 200.00 |
|
|
||
|
100.00 200.00 |
|
|
||
|
100.00 200.00 |
|
|
||
|
100.00 200.00 |
|
|
||
|
125.00 250.00 |
|
|
||
|
125.00 250.00 |
|
|
||
|
125.00 250.00 |
|
|
||
|
125.00 250.00 |
|
|
||
|
125.00 250.00 |
|
|
||
|
225.00 450.00 |
|
|
||
|
225.00 450.00 |
|
|
||
|
225.00 450.00 |
|
|
||
|
225.00 450.00 |
|
|
||
|
225.00 450.00 |
|
| 31. | For maintaining the rights accorded by a patent issued on the basis of an application filed on or after October 1, 1989 under sections 100, 101, 155 and 156 of these Rules, | |
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
| 32. | For maintaining the rights accorded by a patent issued on or after October 1, 1989 on the basis of an application filed before that date, under subsections 182(1) and (3) of these Rules, |
|
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
50.00 100.00 |
|
|
250.00 300.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
100.00 200.00 |
|
|
300.00 400.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
125.00 250.00 |
|
|
325.00 450.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
|
|
||
|
225.00 450.00 |
|
|
425.00 650.00 |
23. Items 33 to 35 of Schedule II to the Rules are replaced by the following:
Item |
Column I Description |
Column II Fee |
|---|---|---|
| 33. | On applying for entry on the register of patent agents under section 15 of these Rules |
$ 350.00 |
| 34. | On notifying the Commissioner, pursuant to subsection 14(2) of these Rules, of a proposal to sit for the whole or any part of the qualifying examination, per paper |
200.00 |
| 35. | For maintaining the name of a patent agent on the register of patent agents pursuant to paragraph 16(1)(a) of these Rules | 350.00 |
TRANSITIONAL PROVISIONS
24. For greater certainty, items 30 to 32 of Schedule II of the Patent Rules, as enacted by section 22 of these Rules, do not apply in respect of fees paid before January 1, 2004 pursuant to those items as they read immediately before January 1, 2004.
25. For greater certainty, where, before January 1, 2004, an application for a patent is deemed to be abandoned for failure to pay a prescribed fee, the amount of the fee that must be paid for the purposes of paragraph 73(3)(b) of the Patent Act to reinstate the application is the amount set out in Schedule II of the Patent Rules as they read on the date of abandonment.
26. Where, in respect of an application for a patent filed on or after October 1, 1989, a notice is sent before January 1, 2004 pursuant to subsection 30(1) or (5) of the Patent Rules, the amount of the final fee that must be paid for the purposes of subsections 30(1) or (5) of the Patent Rules is that set out in Item 6(a) of Schedule II of the Patent Rules as they read immediately before January 1, 2004.
COMING INTO FORCE
27. (1) These Rules, except sections 1, 3 to 9 and 14, come into force on January 1, 2004.
(2) Sections 1, 3 and 9 come into force on the day on which these Rules are registered.
(3) Sections 4 to 8 and 14 come into force on the day that the Agreement between the Canadian Commissioner of Patents and the International Bureau of the World Intellectual Property Organization in relation to the functioning of the Canadian Commissioner of Patents as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty comes into force.
REGULATORY IMPACT ANALYSIS STATEMENT
(This statement is not part of the Rules.)
Description
The Canadian Intellectual Property Office (CIPO), a Special Operating Agency of Industry Canada, administers Canada's intellectual property (IP) system comprising patents, trade-marks, copyrights, industrial designs and integrated circuit topographies. It carries out its mission to help accelerate Canadian economic development and strengthen Canada's innovative capacity by granting or registering IP rights, disseminating IP related information, encouraging innovation and promoting Canada's IP interests internationally.
Canada's positioning as a leader in the global economy relies, in part, on an effective IP framework based on world-class standards. Ensuring a modern and globally competitive intellectual property regime is essential in creating a business climate that is conducive to innovation and Research and Development in Canada and that attracts investment to Canada.
CIPO manages Canada's IP framework. It confers ownership or recognition of IP rights in exchange for public disclosure of the creativity and processes behind that property. It also ensures that the wealth of data and strategic information derived from these innovations is accessible to Canadians. IP protection is separately sought in each country, thus any foreign entity wanting to protect IP rights in Canada needs to file within Canada.
The increasing complexity of IP applications, in addition to increased demand for services (as indicated in the chart above), provides a significant challenge to CIPO. In a recent survey, clients expressed a general satisfaction with the quality of services provided by CIPO but indicated a strong desire for a significant reduction in the time required to examine and grant or register IP rights. For CIPO, the challenge is to maintain quality and improve upon its service levels in order to meet client expectations, while concurrently improving workplace well-being for employees and positioning Canada more prominently on the international IP stage.
Increased workload, fueled by client demand, has resulted in growing inventories and lengthening turnaround times, contrary to the expectations for a world-class IP agency. Lack of resources limits CIPO's ability to respond to demands for service in a timely fashion while still maintaining quality.
Canada has charged fees for the registration or granting of IP rights throughout its history. The current patent fees were last changed in 1989, trade-mark and industrial design fees in 1985 and copyright fees in 1997.
The fee structures in place at CIPO are consistent with international norms for IP agencies, i.e., fees are charged for filing, examination, registering and granting of IP rights, for maintenance or renewal of these rights and for a variety of other services. Fees currently charged by Canada are significantly less than those charged by major IP agencies in other jurisdictions, as noted in the following table.
| Selected fees currently charged in Canada as a percentage of those charged in other jurisdictions |
USA |
Europe |
Japan |
Australia |
|---|---|---|---|---|
| Patent fees over 20-year life cycle (large entity) | 37% | 19% | 24% | 69% |
| Registration of a trade-mark (3 classes) |
22% | 12% | 12% | 32% |
CIPO, as a Special Operating Agency within Industry Canada that is financed through a revolving fund, is required to operate in a business-like manner and to fully recover its costs from the clients receiving its services. Taxpayers have not been required to fund CIPO costs. Intellectual property rights are expected to have economic value to the holder of the rights, and consequently, long-standing Canadian government policy has been to require those obtaining these economic benefits to pay for the costs of managing the IP system in Canada. Most government jurisdictions around the world follow a similar policy.
Current fee levels will not provide sufficient funds in coming years to maintain current service levels, let alone improve the service levels to a state expected by clients and consistent with international norms. Without increases in funds, applicants for IP registration will face lengthening turnaround times, CIPO's ability to introduce new technology will be restricted, and representation of Canadian IP interests internationally will be severely compromised. For example, by the end of 2007 in the absence of increased funding, the turnaround time to complete a request for a patent application would be approximately five years as opposed to the international norm of 18 to 24 months.
In addition to fee changes, a series of administrative, housekeeping amendments are brought.
Changes to the Patent Rules will:
a. Support certain fee changes and establish a basis for the international search (ISA) and international preliminary examination (IPEA) services which will be offered by CIPO to Canadian patent applicants. These services are fundamental components of the Patent Cooperation Treaty which facilitates the obtaining of patent protection in multiple countries from the filing of a single international patent application. Currently, these services are offered by only ten other IP offices in the world bearing the status of international authority. Canadian entities requiring ISA and IPEA services must obtain them through an international authority — the European Patent Office. With CIPO offering the services, the work will be done in Canada rather than in another country, thus contributing to Canadian economic activity.
b. Provide a safeguard to applicants and patentees who unsuccessfully attempt to pay a fee. Currently, an applicant or registrant who pays an incorrect fee (e.g., by miscalculating an exchange rate) is at jeopardy of losing the IP right.
c. Permit a priority claim based on a filing in a regional office, such as the European Patent Office which represents several European countries.
d. Clarify the definition of a basic patent application to distinguish it from a more specialized, reissue application.
Amendments to the Copyright Regulations will:
a. Clarify the deemed receipt date of physical and electronic correspondence. This will ensure the timing of receipt of each type of correspondence is considered equally.
b. Require requests for registration of an assignment or licence of a copyright to be in writing. This will provide certainty in the request being made.
c. Remove certain references to "inches". References to metric measurement will remain.
d. Clarify that a fee is not charged for correction of clerical errors committed by the Registrar.
Alternatives
CIPO funds its operations entirely from fees collected for services, without a requirement for Parliamentary appropriations. CIPO has considered three options for changes in fees:
Option 1: Status Quo — no changes to fees
If there are no changes in user fees, CIPO revenues will not be adequate to either maintain quality and/or improve service levels, such as the time it takes to grant or register IP rights. For example, given the expected increase in demand and current staffing levels, by 2007 the turnaround time to process a request for examination of a patent may be 48-60 months instead of the international norm of 18-24 months. In this situation, Canada would clearly be in danger of losing a competitive edge. With the fee increases, CIPO will be able to achieve a standard of 24 months or less, once current backlogs in applications are cleared.
Option 2: Reduce or eliminate fees charged for services
Reduction or elimination of user fees would require that CIPO be funded through appropriations. This option is not feasible since it would not be consistent with Treasury Board Policy that CIPO operates in a business-like manner such that the revenues it collects are sufficient to cover its costs. This situation would not be consistent with international practices, since all major jurisdictions charge fees for IP registration and maintenance.
Option 3: Increase fees to provide funds for improved service levels
Under this option, many of the current user fees would be increased and a few new fees introduced. The revenues from these fees would be adequate for CIPO to fully recover its costs and to improve quality and service levels, consistent with clients' expectations and international norms. This option is the only one which permits CIPO to carry out its mandate in a responsible manner. (Note: these fees are briefly outlined in the next section.)
Benefits and Costs
Overall Impact
The increases in fees are expected to have a very minor impact on Canadian business and economic activity. Approximately 75% of CIPO revenues are being received from foreign entities seeking IP protection in Canada, and consequently, the impact of fee increases on Canadian entities is much smaller than the total increase in revenues. The net increase in fees paid by Canadian entities is expected to be about $6 million per year. Further, CIPO will be able to provide about $6 million of services to Canadian entities related to international search and international preliminary examinations instead of the firms now having to obtain these services from another jurisdiction. In addition to being able to keep this work in Canada, applicants will benefit from a reduced fee for domestic patent applications when CIPO has already provided an international search or international preliminary examination. The net increase in IP fees would have little measurable impact on Canadian innovation or on Canadian economic activity.
A key element underlying these planned fee changes is to significantly increase CIPO's capacity to service its clients as the organization seeks to further strengthen its customer focus and its business operations. As such, the benefit to Canadian and other applicants and registrants will be:
• more timely service (e.g., reduced turnaround time for examination of an application to register a patent);
• improved quality (e.g., levels comparable to or better than other IP offices);
• access to new services in Canada (e.g., the international search and international preliminary examination activities);
• introduction of new technology (e.g., to allow more efficient electronic filing of applications and to further facilitate the use of e-commerce by CIPO's clients as the organization migrates to a fully electronic, Web-based environment); and
• better dissemination of IP information in Canada (e.g., to encourage citizens and businesses to use or make more effective use of the IP system to stimulate innovation and provide competitive advantage in the marketplace).
Since fees related to filing an application for obtaining an IP right are being kept at relatively low levels, it is not expected that the fee increases will have any significant impact on the number of IP applications filed with CIPO.
Canadian fees will still remain competitive with those of other jurisdictions, as noted in the table below:
| Selected fees in Canada as a percentage of those charged in other jurisdictions |
USA(1) |
Europe |
Japan(1) |
Australia |
|---|---|---|---|---|
| Patent fees over 20-year life cycle (large entity) | 46% | 24% | 30% | 86% |
| Registration of a trade-mark (3 classes) |
32% | 17% | 17% | 45% |
(1) The USA and Japan are reviewing their fees; the comparison is to current fees in other jurisdictions
Impact on IP applicants/patentees/registrants
The total increase in fees for patent applicants and patentees who maintain their rights over the full 20-year life cycle of a patent would be $1,250, an increase of 25% (1.7% per annum) since the last fee increase in 1989 (inflation, as measured by the CPI, has increased by 33% over the same period). The vast majority of patent applicants utilize the services of private sector patent agents to prepare their applications. The fees charged by CIPO are estimated to represent approximately 10-12% of the total cost to the applicant for obtaining IP rights, once the fees they pay to patent agents are also taken into account. Since CIPO fees are charged progressively over the patent life cycle, applicants and patentees can choose not to pay further fees to maintain their IP rights when they perceive that there is no longer an economic benefit to do so.
Specifically, under the Patent Rules there are currently 36 fees listed. Of these, 17 will be increased, 2 will decrease and 17 will remain the same. Four new fees will be introduced. The major fee increases include: fees for application, registration and grant of a patent for a large entity will increase from a total of $1,000 to $1,500 (small entities are 50% of these amounts); patent maintenance fees over the 20-year life cycle will increase from $4,050 to $4,800 (small entities are 50% of these amounts); fees to request the advance of an application will increase from $100 to $500; and fees for an application to reissue a patent will increase from $800 to $1,600. The major new fees are for new services for international search and international preliminary examination activities.
For trade-mark applicants, most fees are rising by modest amounts; for example, the cost to acquire a trade-mark registration will rise from $350 to $500. This amounts to $33.33 per year of rights over the 15-year effective life of a trade-mark, an increase of 43% or 2% per annum since the last trade-marks fee increase in 1985 (inflation has increased by 59% over the same period). Consequently, there will be minimal, if any, impact on the acquisition of trade-mark rights.
Specifically, under the Trade-marks Regulations, there are currently 22 fees listed, of which 16 will increase, 2 will decrease and 4 will remain the same. No new fees will be introduced. The significant increases relate to: filing an application to register a trade-mark (an increase from $150 to $300); filing an application to amend the register for a trade-mark (from $300 to $450); filing a request for an extension of time (from $50 to $125); and filing a statement of opposition to the registration of a trade-mark (from $250 to $750).
There will be a positive impact for stakeholders in the area of copyright filings since reduced fees are being introduced for electronic filings and no change is being made to fees for paper filing. Under the Copyright Regulations, there are currently 6 fee items, of which 3 are decreasing, 2 are increasing and 1 is not changing. The increase relates to providing copies or extracts of the register.
Increased fees for industrial design applications will have a relatively minor effect on applicants. Stakeholders agreed to the changes when first proposed in 1997, and there has been a predominately positive reaction from stakeholders during recent consultations.
Specifically, under the Industrial Design Regulations, there are now 6 fees listed, all of which will increase. Five new fee items will be introduced. Increases relate to the examination of an application to register a design (from $160 to $400); maintenance of a design (from $215 to $350); and examination of an application to register an assignment or other document relating to a design (from $35 to $100). The significant new fees relate to requesting reinstatement of an abandoned application, and acceleration of an application to examine an application to register a design.
Impact on "small entities"/individuals
Under the Patent Rules, a small entity is defined as an entity that employs 50 or fewer employees or that is a university. These small entities account for approximately 20% of patent applications, including both Canadian and foreign sources. Small entities would continue to pay a lower fee (50% of the fee paid by large entities) for filing, examination, grant and maintenance of patents. Continuation of this policy will mitigate any impact on this group. The total increase in fees for a patent right maintained by a small entity throughout the 20-year patent life cycle, would be $625; this amounts to an average impact of just over $30 per year. This is considered to be a very minor impact in comparison to the potential benefits derived from IP protection. Small entity provisions apply only to patent activity, not to other forms of IP.
Impact on agents
There will be small increases in the annual registration fees payable by patent and trade-mark agents. For prospective patent agents, there will be a total one time increase of $850 (from $300 to $1,150) in the fees payable to sit for examinations and to first register as an agent, and for prospective trade-mark agents an increase of $350 (from $400 to $750). The related fees compare favourably to the fees paid for examination and registration of other professionals (e.g., lawyers). The increase represents less than one day of billing time for a typical agent and consequently is considered to be a very minor impact.
Impact on CIPO
The regulations will lead to an increase in total CIPO revenues of approximately $32 million by fiscal year 2006-2007. This represents an increase of approximately 40% over 2001-2002 revenues, or an average amount of about 8% per year over the 5-year period. This will allow CIPO to improve its services to a level acceptable to IP clients and to pay for normal annual cost increases (e.g., future IT and human resource investments).
Consultation
Consultation prior to pre-publication in the Canada Gazette
Prior to publication of proposed fees in the Canada Gazette, CIPO undertook a formal consultation process from October 28 to December 6, 2002. Information on the proposed changes in user fees, the rationale for the changes, comparisons of CIPO fees to those of other jurisdictions and other relevant information was published on the CIPO Internet site under www.cipo.gc.ca. Letters were sent to all Canadian IP professional associations and to other relevant business associations informing them of the proposed fee changes and inviting them to information sessions to discuss the changes and any impacts therefrom. Further, similar letters were sent to a random, representative sample of approximately 2,600 applicants and registrants. All stakeholders were invited to submit comments in writing or by e-mail to CIPO.
Information sessions were held in Ottawa, Montreal, Toronto and Vancouver in mid-November to brief interested parties.
Stakeholder feedback prior to pre-publication in the Canada Gazette
Feedback from the broad IP constituency, including individuals, businesses, universities and organizations, has been received through the information sessions, Web site responses, e-mails and letters. Based on their input, there is general and widespread agreement that CIPO fees need to be increased in order for CIPO to be able to respond to higher demand and provide quality services in a timely manner. There was common understanding and acceptance that some "catch-up" was necessary due to the length of time since fees were last increased. However, to avoid large increases in the future, suggestions were made that CIPO should review fee levels on a more regular basis. (In this regard, CIPO will work toward reviewing its fees again in the next three to five years.).
Some concern was expressed at information sessions about increases in a few specific fees where respondents suggested that the increased fees might conflict with the principle of ensuring fair and equitable access to the IP system. Adjustments to the fee change proposals were made to address these concerns.
Several professional associations responded during the consultation process prior to pre-publication in the Canada Gazette:
• The Canadian Chamber of Commerce (CCC) indicated that they welcomed the general undertaking to improve service levels and supported reasonable increases in fees. The CCC expressed some concern with two particular fees and CIPO has modified its proposals to reflect these concerns.
• The Intellectual Property Institute of Canada (IPIC) indicated that they generally favor an increase in patent fees, which must go hand in hand with an improvement in the quality and speed of examination, and concurred with the proposed fee increases for Industrial Design. IPIC raised concern with two specific fee increases; CIPO has modified these fee increases. IPIC also expressed concern about the feasibility for some applicants and agents to take advantage of reduced fees for electronic filing of trade-mark applications and suggested the same fee be applied to all types of filings. CIPO has decided to retain the discount for electronic filing, consistent with Government-on-Line goals.
• The joint Trademark Legislation Committee of IPIC and the National Intellectual Property Section of the Canadian Bar Association indicated that they are not opposed to fee increases in certain areas on the understanding that there will be a corresponding increase in quality of service. They provided specific suggestions on a variety of trade-mark fees, some of which recommended smaller increases and some of which suggested larger increases than CIPO was proposing, in order to mitigate the particular effects on their clients and to better correspond to the economic value received by trade-mark registrants. CIPO has made adjustments to its fee proposals that accommodate many of the suggestions.
• The International Federation of Industrial Property Attorneys (FICPI) indicated they believed a fee increase was justified, overdue and that it is not unreasonable to increase fees by 100% due to the length of time since the last increases. FICPI made several suggestions for modification of specific fee proposals and CIPO has made adjustments that accommodate many of the suggestions.
Revisions to fee proposals as a result of stakeholder feedback
Several adjustments were made in fee proposals to address stakeholder concerns. The more significant changes are:
• Increases in fees to file a patent application and to maintain a patent right were reduced from what was originally proposed (the total fees over the 20-year life cycle will be $6,300 instead of the $6,900 proposed).
• Increased fees to request an advance of an examination for a patent were scaled back to $500 instead of the proposed $1,000.
• The proposal to combine two current fees for a trade-mark application and registration will not proceed. Stakeholders indicated that they preferred the fee to be paid in two parts and that they supported an increase to the total fee given that this fee has not been increased in 17 years. This will continue to make the initial application fee more accessible to individual inventors and small businesses. Total fees to apply for and register a trade-mark will be $500 instead of the $400 proposed. As outlined earlier, a discount for electronic filing will reduce this total fee by $50.
• The proposed fees for filing a statement of opposition to the registration of a trade-mark were scaled back to $750 from the originally proposed increase to $1,250. Other stakeholder comments to re-engineer this fee will be addressed during the next fee review.
• The proposed fees for filing an extension of time for a trade-mark application were scaled back to $125 from the proposed amount of $150.
• The proposed fees for requesting to send one or more notices pursuant to section 44 or 45 of the Trade-marks Act were reduced to $400 from the proposed amount of $500.
• Two trade-mark fees were increased from the levels initially proposed. The fee to extend wares or services (item 3 of the fee regulations) will be $450 instead of the proposed amount of $350. The fee to file a request pursuant to paragraph 9(1)(n) or (n.1) of the Trade-marks Act (item 12 of the fee regulations) will increase to $500 instead of the current fee of $300. Stakeholders indicated that increases in these areas were preferable to higher fees in other areas (i.e., the fees indicated above which were scaled back).
Results from pre-publication in the Canada Gazette, Part I
The proposed Rules were pre-published for a 30-day comment period in the Canada Gazette, Part I, on March 8, 2003. At the same time, CIPO posted on its Web site, a follow-up report to the consultations that highlighted stakeholder input and the changes that were made to the proposed fee changes in light of their feedback.
Stakeholder feedback was limited during the comment period. Three submissions were received by CIPO, two from patent agents and one from a representative of an industry association involved with copyright. CIPO has responded to each of the submissions. No comments were received from IP applicants or consumer groups.
CIPO has carefully considered these issues and has modified the proposed regulations.
The two submissions received regarding patent fees addressed the same issue: the per-page fee charged for a patent application. The proposed fee as published in the Canada Gazette was $10 per page for each page of specification and drawings in excess of 100 pages (the current fee is $4 per page). The two comments indicated this level of fee increase would pose a burden on applications dealing with biotechnology patents. CIPO has amended the proposed regulations to reduce this fee to $6.
The submission received regarding copyright suggested minor editorial modifications to the English regulations dealing with one administrative amendment. CIPO has made the change to the wording to clarify the intended meaning.
Compliance and Enforcement
These Rules will be enforced by the application of existing provisions in the Patent Act, the Trade-marks Act, the Copyright Act, and the Industrial Design Act. In many cases, the required fee must be paid prior to CIPO undertaking a related action. In other cases, failure to pay a fee could result in a loss of IP protection or loss of status. Enforcement and compliance provisions remain unchanged as a result of the proposed regulatory changes.
Accordingly, there are no new compliance and enforcement provisions required to monitor and enforce these regulatory changes.
Contact
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Graham Frost
Director
Planning, Finance and Administration Branch
Canadian Intellectual Property Office
Place du Portage, Phase I, Room 413
50 Victoria Street
Hull, Quebec
K1A 0C9
R.S., c. 33 (3rd Supp.), s. 3
S.C. 1993, c. 15, s. 29
SOR/96-423
NOTICE:
The format of the electronic version of this issue of the Canada Gazette was modified in order to be compatible with extensible hypertext markup language (XHTML 1.0 Strict).
