Bill C-29 — An Act to amend the Patent Act

Did you know that...

Bill C-29, An Act to amend the Patent Act, received Royal Assent May 5, 2005 and the new section 78.6 will come into force on February 1, 2006.

Section 78.6 is the Government's response to a court decision holding that a patent application had become irrevocably abandoned because insufficient fees were paid. The Court's decision did not support the prior common understanding that, as the entity size changed, so would the required fee.

Section 78.6 will provide a 12-month window of opportunity for patent holders and applicants to review the fees paid on their patents and patent applications and make the necessary corrective payments to secure their patent rights.

Should you be concerned about this?

If, at any time in the past, you paid small entity fees when your status at the time of filing the application was that of a large entity, then you may run the risk of losing your patent rights for having underpaid your fees.

What should you do if your patent or patent application fees were underpaid?

Once section 78.6 comes into force, you will have a 12-month period to provide the Canadian Intellectual Property Office (CIPO) with monies to make up for your underpaid fees and, as a result, secure your patent rights. The amount due is the difference between what you paid as a small entity and the amount you should have paid as a large entity.

To determine whether a corrective payment needs to be made, relevant fee schedules and fee payment history with respect to specific patent applications or patents can be found under the Administrative Status of the Canadian Patents Database.

To meet the requirements of section 78.6, in addition to submitting your payment, you will need to provide CIPO with your patent or patent application number, and an indication of the type of fees that were underpaid (e.g., fee on filing an application, fee on requesting examination of an application, etc.).

What will CIPO do?

Starting on February 1, 2006 and upon receiving a payment under that section, CIPO plans to review the dollar amount submitted and send a notice informing you if the payment received is less than what CIPO would have expected, based on its records. Such notices will be sent as a courtesy only and it will be your responsibility to ensure that all requirements of section 78.6 are met.

No notice will be sent if your payment is equal to or exceeds the CIPO calculations. Refunds will not be issued in the event of overpayments pursuant to section 78.6 of the Patent Act. Also, please note there will be no extensions to the 12-month timeframe to submit corrective payments to CIPO.

Key Documents and Information

Bill C-29

• Bill C-29 — An Act to Amend the Patent Act

News Releases and Questions and Answers

• Date set for section 2 of Bill C-29
  
  
• Questions and Answers
  
  
• Technical amendments receive Royal Assent.
  
  
• Tabling of technical amendments
  
  
• GOC's intention to amend the Patent Act

Reference Tools:

• Fee schedules
  
  
• Checklist for C-29 payments
  
  
• Canadian Patents Database

Bill C-29 consultations

• Comments on proposed amendments
  
  
• Call for comments on proposed amendments

Payment of Fees Notices

• Practice notice: Payment of fees and entity size
  
  
• Official Notice: Payment of fees (2001)

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Disclaimer:
The information on this Web site provides general information only and does not provide legal advice. In the event of any inconsistency between the information and the applicable legislation, the legislation must be followed.