Payment of fees: General authorization to charge a deficiency to deposit accounts and credit cards

A recent decision of the Federal Court of Canada, Government of the U.S.A. et al. v. the Commissioner of Patents addresses broad authorization statements contained in cover letters and how they may constitute a clear and valid authorization for the Commissioner to debit deposit accounts or credit cards additional sums of money needed to effect payment of fees when there is a clear intent to pay a fee. As a result of this decision, CIPO has reviewed its practice in relation to the acceptance of general authorization statements to charge a deficiency to deposit accounts or credit cards and effective immediately will apply the following practice.

In the processing of a fee payment if there is a clear and obvious intent to pay a fee yet the submitted amount is deficient and the authorized payer has included a general authorization statement to charge any fee deficiency to a deposit account or credit card currently on file, the Office will charge the deposit account or credit card the appropriate fee, assuming there are sufficient funds, and will inform the payer, by way of office letter, of the action taken by the Office.

It is important to note that the inclusion of a general authorization statement when making a fee payment does not exempt the applicant/patentee from taking any other action required to fulfill the conditions required pursuant to the Patent Act and Patent Rules. Therefore, in situations where paying a fee isn't the only action required, applicants and patentees should ensure that all appropriate actions have been taken.

For example: An application or patent which has been deemed abandoned for failure to pay a maintenance fee is required to submit to the Office a clear request for reinstatement, payment of the past due maintenance fee and the reinstatement fee. In situations where the communication contains a clear request for reinstatement and the past due fees but does not include the reinstatement fee, a general authorization statement will serve to effect payment of the additional fee of $200 on requesting reinstatement set out in item 7 of Schedule II of the Patent Rules and the fee payment will be processed accordingly.

Please note that the Office will not speculate as to which service the fee is intended to be applied nor as to the entity size to which the payment relates. In spite of a general authorization statement, if the letter is unclear as to the intention of the payer, the Office will not process the fee payment. Therefore, when a payer submits a fee payment they should provide the Office with as much information as possible with regard to the service for which the payment is being submitted as well as an indication of whether the fee submitted is for a small entity or a large entity.

Furthermore, in order to avoid confusion, the Commissioner strongly recommends the use of the following general authorization statement:

Should the fees submitted with this letter be insufficient to cover all of the fees for which payment is explicitly or implicitly requested by this letter, the Commissioner is authorized to charge the amount of the insufficiency to [deposit account No...] or [indicate firm] [indicate credit card type] account already on file.

It is the responsibility of the applicant/patentee to ensure their deposit account or credit card contains sufficient funds to cover all fee payments. If two accounts are identified by the payer, CIPO will, where necessary, attempt to withdraw from them in the order in which they appear in the general authorization statement. If the sources of funds are insufficient, the Office will not be able to debit the account as instructed in the general authorization statement.