Amendment to Fees Provisions in Canadian Patent Act

Bill C-29, An Act to Amend the Patent Act, received Royal Assent on May 5, 2005. The Bill, in part, amends the Canadian Patent Act in response to fallout from the Dutch Industries decision reported previously in E-TIPS® (Vol 2, No 14, December 18, 2003 and Vol 3, No 14, December, 2004). The Patent Act currently provides for reduced patent fees for certain applicants qualifying as "small entities" but the potential for underpayment arises if a small entity applicant later becomes a large entity. In the Dutch Industries case, the Federal Court of Appeal held that the Commissioner of Patents had no discretion to accept "top-up payments" to correct underpaid patent maintenance fees from a small entity applicant after it becomes a large entity applicant. Bill C-29 adds a provision to the Patent Act that allows applicants a one-time, 12-month window to pay any underpaid maintenance fees. Payments made during this 12-month window will be deemed effective from the date the fees should have been paid. The Bill is expected to come into force in the spring of 2006. For the text of the Dutch Industries case, see: http://reports.fja.gc.ca/fc/2003/pub/v4/2003fc32241.html For further information about the text and the status of the Bill, visit: http://makeashorterlink.com/?B17A24D0B Summary by: Clare McCurley