Commissioner authority to waive patent fees

Summary#

These rules (SOR/2024-50) change the Patent Rules so the office that runs patents can fix widespread underpayments that happen because the office gave wrong fee information. The change gives the Commissioner at the Canadian Intellectual Property Office new discretion to waive or extend payments in those cases. The rules came into force on March 25, 2024 (published in the Gazette on April 10, 2024).

What it does#

• Replaces parts of subsection 3(4) so the usual requirement that an applicant identify the source of the error and pay the shortfall can be set aside in some cases.
• Adds section 139.1 to allow the Commissioner to waive, in favour of an applicant or patentee, the difference between an insufficient payment and the correct fee when the shortfall resulted from an error by the office.
• Allows the Commissioner to waive the same unpaid portion for other applicants/patentees who likely relied on the same wrong information, provided they pay within the earlier of a day fixed by the Commissioner or four months after the initial waiver.
• Says the normal time-rule in subsection 3(1) does not apply to the special payment period described above.
• Requires the office to notify the public about which applications or patents are covered when it uses these powers.

Who's affected#

• Patent applicants and patent holders (patentees) who pay fees to the Canadian Intellectual Property Office.
• Patent agents and lawyers who help clients with fee payments.
• Small businesses and individual inventors that might otherwise face extra costs or deadlines.
• The Canadian Intellectual Property Office itself, which will handle fewer one-by-one corrections but may collect less fee revenue.

Why it matters#

• It helps people avoid losing rights or paying extra fees when the patent office provides incorrect fee information.
• It can save time and money for many affected applicants by allowing a single, office-led fix instead of many individual requests.
• It reduces administrative work for the patent office, but also means some fees may be waived (lost revenue for the office).
• The change is discretionary: the Commissioner can choose whether to use these powers and how broadly to apply them.