Manual of Patent Office Practice
Chapter 24
Maintenance fees
24.01
Scope of this chapter
This chapter outlines the Patent Office policy respecting the fees to be paid
to maintain patent applications and patents, and the procedures and time limits
relating to the payment of maintenance fees.
24.02
Maintenance of patent applications
An applicant who files a patent application in Canada after October 1, 1989 must
pay maintenance fees for prescribed periods in order to keep the application in
effect (subsection 27.1(1) of the Patent Act).
Divisional applications carry their own maintenance fees, separate from the parent
application. Since a properly filed divisional application will bear the filing
date of the parent application, a divisional application is, at the time of filing,
subject to fees to maintain the application in effect. Such fees will be calculated
from the filing date of the parent application and are payable upon filing of the
divisional application (subsections 99(3), and 154(3) of the Patent Rules). For
example, if a divisional application is to be filed 40 months after the parent
application, maintenance fees for the 2nd
and 3rd years have to be paid upon 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 2 of the Patent Rules. It should be noted that the international filing
date is the date on which the maintenance fee Schedule is based.
Maintenance fees do not have to be paid on an application for reissue of a patent
(sections 101, 156 and 182 of the Patent Rules). The applicant must continue to
pay maintenance fees on the patent being reissued.
24.02.01
Due dates for application maintenance fees
In order to maintain a patent application in effect, an applicant must pay maintenance
fees for each one-year period from the second anniversary of the filing date of the
application. Whether or not the application issues to patent the maintenance fees
will continue to be due on the same schedule until the last payment is made before
the nineteenth anniversary, which covers the period from the nineteenth anniversary
to the twentieth anniversary, which represents the full term of the patent. The
time limit for paying each maintenance fee is given in Item 30, Part VI of Schedule
II of the Patent Rules. Part VI of Schedule II of the Patent Rules is reproduced
in section 25.06 of the present manual.
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 or a patent
may be paid in advance.
Time limits for payment of maintenance fees cannot be extended.
24.02.02
Responsibility for payment of maintenance fees for applications
Only the applicant or the authorized correspondent shall pay maintenance fees.
The amounts are set forth in Item 30, Part VI of Schedule II of the Patent Rules.
The authorized correspondent is responsible for ensuring the timely payment of
maintenance fees. The Patent 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 notice mailed approximately three months in advance
of the second anniversary of the application's filing date.
24.02.03
Non-payment of application maintenance fees
Non-payment of maintenance fees will result in abandonment of the application
under subsection 73(1) of the Patent Act. The authorized correspondent
will normally be advised in a notice of abandonment that applicant's application
is abandoned for failure to pay the maintenance fee by the due date. For
details on the reinstatement procedure for abandoned applications (see section
20.08 of the present manual).
24.03
Maintenance of patents
Maintenance fees for patents issued on the basis of applications filed after
October 1, 1989 are payable for each one year period between the second and
twentieth anniversaries of the date of filing of the application in Canada.
Maintenance fees for patents issued on or after October 1, 1989 on the basis of
an application filed before October 1, 1989 are payable for each one year period
between the second and the seventeenth anniversaries of the date on which the
patent was issued.
No maintenance fee for a patent is due for any period where a maintenance fee
was paid to maintain the 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 (section 101 of the Patent Rules).
24.03.01
Due dates for patent maintenance fees
Maintenance fees are due before the first day of each of the one-year periods
they cover. For example, payment is due on or before the eleventh anniversary for
the one year period ending on the twelfth anniversary. The time limits for maintenance
fees for patents are given in Items 31 and 32 of Part VI of Schedule II of the
Patent Rules, included as Section 25.06 of this manual.
Late payment of the maintenance fees for patents are also accepted by the office if
the payment is made within the one year period the fee covers and the prescribed late
payment fee is also paid. For example, the maintenance fee for the one year period
ending on the seventeenth anniversary of the filing date can be made, with the
additional fee for late payment, on or before the seventeenth anniversary date.
Any or all of the maintenance fees for a particular application or a patent resulting
from that application may be paid in advance.
The time limits for payment of maintenance fees for patents cannot be extended.
24.03.02
Responsibility for payment of maintenance fees
The patentee is responsible for ensuring the timely payment of maintenance fees.
The Patent Office will not send a reminder to the patentee that a date for the
payment of a maintenance fee is approaching.
24.03.03
Non-payment of patent maintenance fee
A patent is deemed to have lapsed at the expiration of the time specified in Part
VI of Schedule II of the Patent Rules (subsection 46(2) of the Patent Act)
for payment of maintenance fees. A lapsed patent cannot be revived. See also
section 20.09 of MOPOP on Lapsed Patent. If the maintenance fee on a patent is
not paid on or before the anniversary date the Patent Office will normally inform
the patentee that a late payment fee must be paid within one year following the
anniversary or the patent will lapse.
24.04
Schedule of maintenance fees
The tariff of the maintenance fees are listed in Part VI of Schedule II (Section 3)
of the Patent Rules, and in section 25.06 of the present manual.
24.05
Maintenance fee information on the Canadian Patent Database (CPD)
Maintenance fee information is accessible on the administrative status page
("View administrative status") of the Canadian Patent Database at:
(http://patents1.ic.gc.ca/intro-e.html).
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 grantee
is a small entity type and the date and amount of the next payment if the applicant
or grantee is a large entity type.
Expired status is defined as: "In cases where all maintenance fees required by
section 46 of the Patent Act were paid, the day at the end of which the patent
term expired, pursuant to section 44 or 45 of the Patent Act.
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