According to recent legislative amendments to the Canadian Patent Rules, the official fees paid to the Canadian Intellectual Property Office (CIPO) for patent applications and granted patents will increase from January 1, 2024.

According to the current charging standards, applicants can now pay the relevant official fees (such as maintenance and review fees) that need to be paid after January 1, 2024, which can save hundreds or even thousands of Canadian dollars for most applicants.

For example, for patent applications submitted in Canada, the examination request can be postponed for up to 4 to 5 years from the date of filing. However, if the applicant applies for examination before January 1, 2024, they can save $294 CAD or 36% of the examination fee.

Another example is that during the validity period of a patent, starting from the second year after the application date, the applicant is required to pay maintenance fees in Canada every year. Maintenance fees can be prepaid at any time before the expiration date, so prepaying future maintenance fees before January 1, 2024 can save a significant amount of money. According to the new fee schedule, patent holders who pay all annual maintenance fees (i.e. maintenance fees from the 2nd to the 19th year after the application date) will pay a total of CAD 6740; In contrast, if all maintenance fees are paid before January 1, 2024 according to current standards, the patent holder only needs to pay 5136 Canadian dollars, which can save a total of 1604 Canadian dollars.

According to the expanded definition of the new fee standard, applicants who have newly obtained the qualification of "small entity" can save more costs.

In another important change, starting from January 1, 2024, the definition of "small entity" has been expanded to include entities with less than 100 employees, while the current definition of "small entity" only includes entities with 50 or fewer employees.

According to current regulations, applicants who meet the definition of "small entity" are eligible for a 50% discount on standard official fees. It is worth noting that the increase in standard official fees under the new charging standards is mostly higher than the increase in official fees for small entities. Therefore, although applicants who qualify as "small entities" according to the existing definition can still save money by paying future official fees before January 1, 2024, according to the current fee standards, for those applicants who do not qualify as "small entities" according to the existing definition but qualify as small entities according to the new expanded definition, they may save even more by applying for "small entity" qualification after January 1, 2024 and paying small entity fees according to the new standards.

However, caution should be exercised when determining whether the applicant is entitled to pay official fees based on the expanded definition of small entity rates. The Canadian court has explicitly stated that the entity qualification is only determined once when the patent system is first used, and subsequent fees must be paid based on this initial decision, although the entity qualification may change after the application is submitted or during the patent validity period.

Therefore, applicants who wish to enjoy the small entity fee discount under the new rules must determine that their number of employees is less than 100 on the date of filing their application directly in Canada or on the date of entering the Canadian national phase of their international application under the Patent Cooperation Treaty (PCT). For example, applicants who currently have less than 100 employees and submit applications directly in Canada before January 1, 2024, must first determine the number of employees at the time of application submission to determine whether they are eligible for small entity fee discounts based on current or new fee standards. If the applicant has 50 or fewer employees on the application date and otherwise meets the current definition of a small entity, they may apply for eligibility as a small entity and pay official fees at the small entity rate in accordance with current rules. If the applicant has 51-99 employees on the date of application submission and meets the definition of a small entity in other aspects, they can apply for eligibility for a small entity based on the expanded definition after January 1, 2024, and pay official fees according to the newly revised fee rate for small entities.

It should be noted that if the applicant meets the eligibility criteria for a "small entity" under the new expanded definition, but does not comply with the current definition and has already paid one or more fees at the current standard rate, they usually do not have the right to request a refund of part of the patent fees paid before January 1, 2024. This is because the amendment to the Canadian Patent Rules, which will take effect on January 1, 2024 and introduce the expanded definition of a "small entity", does not have retroactive effect before January 1, 2024. In addition, Section 139 of the Canadian Patent Rules only provides a very narrow list of refundable fees. Although Article 139h does include provisions regarding the refund of fees: "(h) Any overpaid fees do not constitute 'overpaid fees' as the applicant/patentee is a large entity at the time of payment.

(Compiled from www.lexology. com)