MOPOP - Chapter 24


Maintenance fees

Table of Contents

24.01
Maintenance of patent applications – June 2015

Pursuant to subsection 27.1(1) of the Patent Act and subsection 99(1) of the Patent Rules, an applicant who files a patent application in Canada must pay maintenance fees for prescribed periods in order to maintain the application in effect.

The amounts and time limits for paying maintenance fees to maintain an application in effect are listed in item 30 of Schedule II of the Patent Rules.

Divisional applications carry their own maintenance fees, separate from the parent application. Pursuant to subsections 99(2) and 154(2) of the Patent Rules, maintenance fees will be calculated from the filing date of the parent application and are payable upon filing of the divisional application. For example, if a divisional application is filed 40 months after the parent application, maintenance fees for the 2nd and 3rd years have to be paid upon filing of the divisional application.

Applications filed under the provisions of the Patent Cooperation Treaty and entering the national phase in Canada must pay maintenance fees in accordance with part VI of Schedule II of the Patent Rules. It should be noted that the international filing date is the date on which the maintenance fee schedule is based.

24.01.01
Due dates for application maintenance fees

For maintaining an application filed on or after October 1, 1989, an applicant must pay maintenance fees for each one-year period from the second anniversary of the filing date of the application. 

The maintenance fee for an application must be paid before the first day of the one-year period the fee covers.  For example, the maintenance fee covering the one-year period ending on the fifth anniversary of the filing of the application must be paid on or before the fourth anniversary of the filing date.

Any or all of the maintenance fees for a particular application may be paid in advance.

In accordance with sections 102 and 157 of the Patent Rules, the time limits for payment of application maintenance fees cannot be extended.

24.01.02
Late and non-payment of application maintenance fees

If the maintenance fee on a patent application is not paid on or before the anniversary date the application will become abandoned pursuant to paragraph 73(1)(c) of the Patent Act.  The application, however, may be reinstated if there is a clear request for reinstatement and payment is made within the one-year period following the due date along with the prescribed reinstatement fee listed in item 7 of Schedule II of the Patent Rules. If the one-year period for reinstatement has expired before payment of both the maintenance fee and the reinstatement fee, or before a request for an extension of the reinstatement period is made (subsection 26(1) of the Patent Rules), the application can never be reinstated (see Chapter 20 of this manual).

24.01.03
Responsibility for payment of maintenance fees for applications

The authorized correspondent is the only person entitled to pay the maintenance fees for patent applications. 

As a courtesy, the Office will send a reminder to the authorized correspondent that the payment of the first maintenance fee is approaching.  This will be a one-time courtesy notice mailed approximately three months in advance of the second anniversary of the application's filing date.

In the case of an abandoned application, the Office will also send a courtesy notice to a private inventor (no patent agent has been appointed) that the expiry of the time limit for reinstatement of an abandoned application is approaching. This will be a courtesy notice mailed approximately three months prior to the expiry of the time limit for reinstatement of an abandoned application.

It is always the responsibility of the authorized correspondent to ensure the timely payment of maintenance fees.  As notices sent to the authorized correspondent are sent as a courtesy only, consequences for non-payment arise even if a notice is not sent.

24.02
Maintenance of patents – June 2015

Pursuant to subsection 46(1) of the Patent Act and subsection 100(1) of the Patent Rules, a patentee must pay maintenance fees for prescribed periods in order to maintain the rights accorded by the patent.

The amounts and time limits for paying maintenance fees to maintain the rights accorded by a patent are listed in items 31 and 32 of Schedule II of the Patent Rules

No maintenance fee for a patent is due for any period where a maintenance fee was paid to maintain the corresponding patent application in effect.

Maintenance fees for reissue patents are due at the same times and for the same periods as the original patent for the unexpired term of the original patent.  No fee to maintain the rights accorded to a reissue patent is payable for any period where a maintenance fee was paid to maintain the original patent or to maintain the application for the original patent (subsections 101(2), 156(2) and 182(4) of the Patent Rules).

In accordance with subsections 100(2), 155(2) and 182(2) of the Patent Rules, maintenance fees do not have to be paid on an application for reissue of a patent. However, the patentee must continue to pay maintenance fees on the original patent that is the subject of the application for reissue.

24.02.01
Due dates for patent maintenance fees

For maintaining the rights accorded by a patent issued on the basis of an application filed on or after October 1, 1989, maintenance fees will continue to be due on the same payment schedule until the last payment is made before the nineteenth anniversary of the filing date.

For maintaining the rights accorded by a patent on the basis of an application filed before October 1, 1989, an applicant must pay maintenance fees for each one-year period from the second anniversary of the day on which the patent was issued until the last payment is made before the sixteenth anniversary of the issue.

In accordance with sections 102 and 157 of the Patent Rules, the time limits for payment of maintenance fees for patents cannot be extended.

24.02.02
Late and non-payment of patent maintenance fees

If the maintenance fee on a patent is not paid on or before the anniversary date, the patent is now considered to be in an “about-to-lapse” state. Unless the maintenance fee and an additional fee for late payment are paid within one year following the anniversary date, the patent (subsections 100(1), 155(1) and 182(1) of the Patent Rules) or reissued patent (subsections 101(1), 156(1) and 182(3) of the Patent Rules) will lapse.

A lapsed patent cannot be revived (see Chapter 20 of this manual).  Pursuant to subsection 46(2) of the Patent Act, a patent is deemed to have lapsed at the expiration of the time specified in items 31 and 32 of Schedule II of the Patent Rules for payment of maintenance fees.

24.02.03
Responsibility for payment of maintenance fees for patents

Following the grant of a patent, the fee to maintain the patent can be paid by the patentee, or by any person acting for the patentee (e.g. authorized correspondent, owner, inventor, clearing house, etc.), whether residing in Canada or not. 

If the patentee is a private inventor (no patent agent has been appointed) the Office will send a reminder that the date for the payment of a maintenance fee is approaching.  A courtesy notice will be mailed approximately six months prior to the anniversary date, and another notice will be mailed three months prior to the anniversary date or the patent’s issue date, if applicable.

If the patentee is Canadian and an agent has been appointed, the Office will send a courtesy notice to the agent and a copy to the patentee informing them that the patent is now in an “about-to-lapse” state for failure to pay the maintenance fee by the due date.

In cases where the patentee is not Canadian and an agent has been appointed, the Office will send the “about-to-lapse” notice to the authorized correspondent only.

Notices are sent as a courtesy only and consequences for non-payment arise even if a notice is not sent.

24.03
Maintenance fee information on the Canadian Patent Database – December 2015

Maintenance fee information is accessible on the administrative status page (select “Admin Status” tab) for all patent applications and patents listed in the Canadian Patent Database (CPD).

Maintenance fee information includes the date and amount of the last payment received, the date and amount of the next payment if the applicant or patentee is a small entity type and the date and amount of the next payment if the applicant or patentee is a standard entity type.

It should be noted that the CPD is for information purposes only. For legal purposes, it is recommended that the relevant documents in the Patent Office be consulted.


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