Bill C-29 Addresses Small Entity Top-Up Payments, Senate Consultation on JCPA Committee Members

Bill C-29, An Act to Amend the Patent Act, was introduced in Parliament in Canada on December 3, 2004. The Bill addresses two technical issues. First, the Bill amends the Canadian Patent Act in response to fallout from the Dutch Industries decision reported previously in E-TIPSâ„¢ (Vol 2, No 15, January 8, 2004). In that decision, it was decided that the Commissioner of Patents had no discretion to accept top-up payments to correct underpaid patent maintenance fees from small entity to large entity. The Patent Act provides for reduced patent fees for certain applicants who qualify as "small entities". However, a potential for underpayment arises if a small entity applicant later becomes a large entity. In the Dutch Industries decision, the issue was whether such an underpayment can be corrected. Bill C-29 would add a provision to the Patent Act allowing applicants a one-time, 12-month window to pay any underpaid maintenance fees. Payments made during the 12-month window would have deemed effect from the date the fees should have been paid. The small entity provisions of the Bill have been criticized by some Canadian practitioners as too narrow in scope. Some fear that the amendment in the Bill will not address all of the uncertainties surrounding small entity status arising from the Dutch Industries case. Second, the Bill amends the Jean Chretien Pledge to Africa (JCPA) to allow the Senate to be consulted on appointees to the JCPA expert advisory committee. As reported previously in E-TIPSâ„¢ (Vol 3, No 10, October 27, 2004), the JCPA would establish a system to make certain generic drugs available for export from Canada to developing countries. The Bill has received first and second readings in the House of Commons, and will be studied in the New Year by the Industry Committee. The Bill, which currently has the support of all five parties, is expected to be passed relatively quickly. The current text of Bill C-29 is available at: http://makeashorterlink.com/?K14F2131A. Track the status of the Bill at: http://www.parl.gc.ca/LEGISINFO. Summary by: Jennifer Jannuska