CIPO News Updates
February 1, 2006
The Clock is Ticking: Coming into Force of Section 78.6 of the Patent Act (Bill C-29)
Section 78.6 of the Patent Act (Bill C-29) came into force today. This
section of the Act provides relief to patent holders and applicants who, having
incorrectly paid certain patent fees, could see the validity of their patents jeopardized.
In 2003, pursuant to the patent infringement case of Dutch Industries Ltd.
v. The Commissioner of Patents, Barton No-Till Disk Inc. and Flexi-Coil Ltd.
(commonly known as the Dutch Industries case), the Federal Court of Appeal ruled
that entity size is determined once when the patent application process is first
engaged. For example, if a company is a large entity at filing, it is required to
pay large entity fees throughout the life of the patent regardless of any subsequent
changes in the entity size of the owner. The Court's decision did not support the
prior common understanding that, as the entity size changed, so would the required fee.
The Court's decision also curtailed the practice of flexibility exercised by the
Canadian Intellectual Property Office (CIPO), which consisted of allowing patent
holders/applicants to pay the difference in fees (commonly referred to as "top-up"
payments) when they later discovered that their entity size had changed from small
to large.
Two groups of patent holders/applicants are affected by the Federal Court
of Appeal's decision:
The first group could potentially encompass thousands of patent holders/applicants
whose entity status changed from large to small some time after the patent system
was first engaged and who subsequently paid a fee on the small entity scale.
The second group comprises those who have discovered that they erroneously paid
on the small entity scale when they, in fact, were large entities and should have
paid the higher fees. The validity of their patents could be contested in court
as a result of having paid the wrong fee and because the Commissioner of Patents
was found to lack the legal authority to accept corrective payments for these cases.
What happens if your patent or patent application fees were underpaid?
Section 78.6 of the Patent Act (Bill C-29) provides patent holders/applicants with a 12-month period, starting February 1, 2006, until February 1, 2007, for the correction of past fee payments in situations where a fee was incorrectly paid at the lower small entity fee level instead of the higher large entity fee level. The amount due is the difference between what was paid as a small entity and the amount that should have been paid as a large entity.
What has CIPO done so far?
In addition to issuing a news release on October 28, 2005, CIPO sent an
information notice to all registered Canadian patent agents. CIPO also sent
letters to patent holders and applicants identifying applications or patents
for which a small entity fee payment has been recorded. The letter was sent
as a courtesy and is intended as a reference tool only. It remains the
responsibility of the patent holder and applicant to review their patent
portfolio to ensure the applicable fees have been paid in accordance with the Patent Act and Patent Rules.
What should you do?
To assist you in determining whether a corrective payment needs to be made
or to obtain background information on section 78.6 of the Patent Act and
steps you can take to make a corrective payment, visit the
CIPO website or call
the CIPO Client Service Centre at (819) 997-1936.
CIPO adopts the 8th edition of the International Patent Classification
As a consequence of the Strasbourg Agreement (1971), CIPO has adopted the most recent version of the International Patent Classification (IPC-2006).
The IPC-2006 classification scheme provides for two levels of classification:
a core level which uses a subset of the IPC with some additional entries, and
an advanced level which comprises all of the IPC-7 as well as new entries. In
other words, the advanced level is a substantially expanded core-level IPC.
CIPO has elected to classify its documents according to the advanced level
of IPC-2006.
You will notice small changes in the format of the IPC appearing on the front
cover of published Canadian patent documents and in the Canadian Patent Office
Record, in the IPC data appearing in the patent data export products, and on
the Canadian Patents Database.
The following example shows how the new "Advanced" level symbols of IPC-2006
classifications will appear. Classifications will be followed by the "version"
date in brackets. Classifications with "Inventive" information will appear in
"bold italics". Classifications with additional
useful "Non Inventive" information will appear in normal "italics".
B28B 12/9 (2006.03) — Advanced level inventive information
H05B 3/18(2007.06) — Advanced level additional non inventive information.
Clients can visit the World Intellectual Property Office (WIPO) website for more information on IPC-2006 or to consult the IPC-2006 classification schedules.
Trade-marks Wares and Services Manual has been revised
The revised Trade-marks Wares and Services Manual (the Manual) is now available.
This important tool helps applicants describe their wares and/or services
specifically and correctly the first time, thus greatly reducing the processing
time of trade-mark applications. The Manual also provides trade-mark examiners
with a framework that promotes a more consistent approach when examining applications.
New Patent Examiner Recruitment System
CIPO has recently launched a redesigned version of its Patent Examiner Recruitment System.
You can now login with a username and password to update your application online.
Those who have previously submitted applications should create an account and re-apply, if they wish to remain in consideration for employment.
Check out the new system or apply now!
New web access to Canadian industrial designs
Canadian industrial designs are now available on the web. This initiative
responds to clients' feedback for better online service and easier access
to industrial designs. The initial phase includes approximately 10 000
designs registered as of June 15, 2002. New registrations will be added
on a weekly basis. CIPO is currently in the process of completing the
electronic back capture of the designs registered prior to this date
and they will be added in Spring 2006. Please visit the
Canadian Industrial Designs Database
and contact us if you have any questions.
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