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Technical Consultation Paper on Changes to Patent Fees
Page 5 of 6

From: Canadian Intellectual Property Office

Other requirements of the User Fees Act

International comparisons

Under the User Fees Act, a department's fees should be comparable to fees in other countries for similar services.

An international comparison reveals that the proposed fees are not out of line with those of other countries. The proposed fees have been compared with those of the United States, Australia, and Europe by way of the European Patent Office (EPO), the United Kingdom and France. These offices were chosen because they have similar procedures as those in Canada, and, with the exception of EPO, have all ratified or acceded to the PLT.

Late payment fees

An international survey reveals that the proposed new late fees are comparable to those of other countries. Table 6 provides a comparison of fees charged for the late payment of a filing fee, the late payment of a maintenance fee, and the late request for examination.

Table 6 : International comparison of late fees at other IPOs
Late Fee Canada Proposed ($CDN) United States ($US)Footnote 12 Australia ($AUS)Footnote 13 Europe (EPO) (€)Footnote 14 United Kingdom (£)Footnote 15 France (€)Footnote 16
For late payment of a filing fee $150 $140 $100/month between 233 and 780€ Not available Not available
For late payment of a maintenance fee $150 $160 $100/month 105€ £0 for the first month late, followed by a fee of £24 per month between 18 and 380€
For late request for examination $150 Not applicable (not a deferred examination regime) $100/month 810€ Not available Not available

Corrections of errors

An international comparison of IP office practices indicates that each of Canada's major trading partners provide mechanisms for correcting errors in a patent, application for patent or document relating to either, but the scope, requirements, limitations and timing vary.

Table 7 provides a comparison of fees charged by foreign IPOs to process a request to correct an error in a patent-related record. While some IPOs, for instance the EPO, place strict limits on correcting errors introduced by an applicant or the applicant's representatives, Canada's proposed service is more forgiving and generally aligns with that of the United States and Australia. It is important to note that no fee is required to request correction of errors in a patent that were introduced by CIPO during processing of the application.

Table 7 : Fee comparison with other jurisdictions: correction of errors introduced by an applicant (or similar service)
Fee Canada
Proposed
($CDN)
United StatesFootnote 17
($US)
Australia
($AUS)
Europe (EPO)Footnote 18
(€)
United Kingdom
(£)
FranceFootnote 19
(€)
Correction of obvious errors in a patent $200
(unchanged)
$100 to $600 $250 €0 £0 27€ to 52€

Amendment after allowance

An international comparison indicates that Canada is one of few countries or regional offices that permit applicants to substantially amend an application after a notice of allowance (or equivalent indication) has been sent by the office. Table 8 provides a comparison of fees charged by foreign IPOs to process amendments submitted after a notice of allowance or other positive indication has been made by the IPO.

The process proposed for Canada is similar to the post-allowance process currently available before the United States Patent & Trademark Office (USPTO). CIPO's proposed service is less rigid than that of other countries as the proposal requires the applicant to request withdrawal of the notice of allowance during submission of an amendment thus having the effect of permitting unlimited amendments before a new notice of allowance is generated. There will also be no limitations – such as a bar on amendments requiring a further search of prior art – imposed on proposed amendments (subject to compliance with the Patent Act and Rules prior to a new notice of allowance).

Table 8 : International comparison of fees for amendment after allowance (or similar service)
Fee Canada
Proposed
($CDN)
United States
($US)
Australia
($AUS)
Europe (EPO)
(€)
United Kingdom
(£)
France
(€)
Amendment after allowance $400
(unchanged)
$300 to $1700Footnote 20 $250 €0 n/a n/a

Service standards

Under the UFA, CIPO is accountable to Parliament regarding its service standards and performance. If the organization does not meet its stated service standards, it may be obligated by law to reduce its fees. CIPO is committed to maintaining the high level of client service it currently offers.

For CIPO, the service standards deemed most relevant under the UFA are the processing times for handling late payment submissions or late requests for examination, processing a request to correct an obvious error in a patent, and completing examination of an amendment after allowance. The proposed standards are limited to services where a corresponding fee must be paid. CIPO will be held accountable for following the processing times on an annual basis, through ISED's Departmental Performance Report.

CIPO's existing service standards, as well as the proposed measures, are consistent with the relevant Treasury Board Secretariat guidelines that they be:

Late payment fees

CIPO followed a simplified approach of adopting the same amount for all three late fees and a commitment that the service standards will be met at least 90% of the time.

CIPO's proposed service standards, listed in Table 9 for processing late payment submissions are unique in that the other IPOs evaluated in this proposal do not provide service standards in relation to the receipt and processing of late payments. By way of example, the USPTO publishes a 12-month average pendency for acceptance of unintentionally delayed payment of a maintenance fee, but does not provide a standard against which these times are measured. Compared to those of other IPOs, CIPO's service standards for these particular services are more explicit and provide more meaningful information to applicants. This requirement gives assurance to patent applicants and owners that when they pay a proposed late fee, they can expect CIPO to make every effort to meet its stated processing times.

New proposed standards (not including postal delivery times, when applicable)

CIPO's existing patent service standards

Table 9 : New proposed standards for processing late payment fees (not including postal delivery times, when applicable)
Service Commitment Expectation
Process fee for late payment of filing fee. A confirmation would be issued within 3 weeks of the receipt of the late fee and filing fee. 90%
Process fee for late payment of maintenance fee and update status of application to reflect that the payment has been processed. A confirmation would be issued within 3 weeks of the receipt of the late fee and outstanding maintenance fee (and reinstatement fee where applicable). 90%
Process fee for late request for examination and remove the late status of the application. A confirmation would be issued within 4 weeks of the receipt of the late fee and request for examination. 90%

Corrections of errors

CIPO's proposed service standards are unique in that the other IPOs evaluated in this proposal do not officially publish service standards in relation to the correction of errors in a patent application or specification. A 2009 WIPO surveyFootnote 21 of patent office correction practices publishes informal service commitments ranging from one week to several months. Compared to those of other IPOs, CIPO's service standards for these particular services are more explicit and provide more meaningful information to applicants.

CIPO's proposed service standard for processing a request to correct an obvious error in a patent document is provided in Table 10, below.

Table 10 : New proposed standards in relation to correction of obvious errors
Service Commitment Expectation
Correction of an obvious error in a patent Correction of the patent or rejection of the request within 6 months of receiving the request. 90%

Amendment after allowance

CIPO's proposed service standard for processing amendment after allowance submissions is provided in Table 11. The service standard reflects a goal that is measurable, achievable and meets the needs of CIPO's clients. Other IPOs offering similar services do not appear to provide publicly available standards associated with these services.

Table 11 : New proposed standards in relation to amendments after allowance
Service Commitment Expectation
Amendment after a notice of allowance has been sent Acceptance or refusal by an examiner within 3 weeks of the receipt of the amendment. 90%
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