The Canadian Intellectual Property Office (CIPO) has recently addressed a significant error. This error concerns the second, third and fourth year maintenance fees paid by small entity patent holders. Initially, the fees listed for the second to fourth anniversaries for small entities were listed as $50 and were not in accordance with inflation and the recent fee increase for January 2024.  The current small entity fee is now $56.21. This discrepancy was due to an oversight on behalf of CIPO.

Prompt Action for Accurate Compliance

In response to this oversight, CIPO acted promptly to amend the Patent Rules on March 25, 2024. These amendments serve as a safeguard for applicants, ensuring they are not penalized for adhering to previously published incorrect fees. These Rules grant the Commissioner of Patents the authority to waive additional fees and eliminate the need for extension applications under specific circumstances.

Implications for Patent Holders

For patent holders who have paid the incorrect small entity maintenance fees, the new provisions offer a reprieve, allowing for the rectification of payments without incurring penalties or having to pay the difference owing. As we move forward, starting July 29, 2024, the adjusted maintenance fee of $56.21 will be enforced. Patent holders are advised to stay informed about upcoming fee notices and deadlines to ensure compliance with the new regulations.

In light of the recent fee correction, CIPO has issued notices to patent holders who have made payments based on the previously incorrectly published CIPO fee schedule. These notices clarify the office’s stance on the matter, stating:

Pursuant to subsections 139.1(1) and 139.1(2) of the Patent Rules as amended on 2024-03-25, the Commissioner of Patents has also waived the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made.

Conclusion

If you receive one of these notices from CIPO regarding the recent fee adjustment, please be assured that there is no cause for concern. The notice serves as an official confirmation that the Commissioner of Patents has waived the fee difference due to the initial error. As such, no further action is required on your part. This measure taken by CIPO’s maintains a fair and stress-free process for all affected patent holders.