Questions and Answers

Coming into force of section 2 of An Act to Amend the Patent Act, (Bill C-29)

Why was the Patent Act amended and what is the scope of section 2?

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 unexpectedly that entity size is determined once, when the patent application process is first engaged.

Section 2 will provide relief to patent holders and applicants who were adversely affected by the Dutch Industries decision.

Who is potentially affected by the court's decision?

Two groups of patent holders/applicants are potentially affected by the Court'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. Currently, these patent holders/applicants have no recourse to make corrective payments.

The second group comprises those who have discovered that they 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 not having paid the correct fee and because the Commissioner of Patents was found to lack the legal authority to accept corrective payments for these cases.

Can a patent holder/applicant who was entitled to pay small entity fees but who paid large entity fees by mistake obtain a refund?

No. Subsection 4(6) of the Patent Rules states "Where a fee is paid by an applicant or a patentee on the basis that it is not a small entity, no refund shall be made solely for the reason that it is later determined that it was at the time of payment a small entity".

Why wait until February 1, 2006 for the coming into force of section 2 of Bill C-29?

It was deemed important to wait until February 1, 2006 to bring section 2 of Bill C-29 into force to allow preparatory time for patent holders and applicants who are affected by the Dutch ruling and who wish to make corrective payments.

Will section 2 of An Act to amend the Patent Act come into force at the same time as the planned regulatory changes on entity size presently under review?

No. We are still in the process of reviewing the proposed amendments on entity size in consultation with our stakeholders.

Can I make corrective payments to my patents or patent applications prior to section 2 of An Act to amend the Patent Act coming into force?

Although it is possible to submit corrective payments in advance, CIPO will be able to process payments between February 1, 2006 and February 1, 2007 only. We recommend that you wait until February 1, 2006 to make your corrective payments.