Fees and Administrative Changes at the Canadian Intellectual Property Office (CIPO)

New fees and minor rule changes at CIPO were announced on June 5, 2003. The fee changes will come into effect in January 1, 2004 for current services, or on the date the Commissioner of Patents becomes an International Search Authority and International Preliminary Examination Authority (ISA/IPEA) under the Patent Co-operation Treaty (PCT), for those services. Trade-mark and industrial design fees have not changed since 1985, patent fees since 1989 and copyright fees since 1997. There is no grandfathering of fees for applications or registrations regardless of when filed. The following minor administrative changes to the Copyright Regulations and the Patent Rules came into effect on June 5, 2003:

for clarification, the definition of _application_ in the Patent Rules does not include an application for the reissue of a patent (reissue is used to correct a defective patent);

CIPO will also now accept priority claims based on regional patents, or PCT applications filed with a regional office (most notably the European Patent Office); and

provision is also made to help patentees or applicants rectify incorrect fee payment.

For copyright registrations, improvements to the regulations ensure:

• electronic and mail documents are given appropriate priority dates;
• requests for registration of assignment or license of a copyright are in writing;
• the regulations are stated in metric measurements; and
• no fees are charged for clerical errors committed by the Registrar.

Many of the changes to the patent fees are a preamble to CIPO_s move to become an ISA/IPEA in the second half of 2004. The rules and fees related to its role in that capacity come into effect once the agreement with the International Bureau of WIPO takes effect. For the online notice, visit: http://strategis.gc.ca/sc_mrksv/cipo/fees/fee_admin-e.html. This page contains links to an explanatory note and relevant legislation. The Regulatory Impact Statement relating to all the changes is found at the end of SOR/2003-208 Rules Amending the Patent Rules, which can be viewed online at: http://canadagazette.gc.ca/partII/2003/20030618/html/sor208-e.html. Summary by: Nicholas J. Whalen If you wonder how the new CIPO fees and the other rule changes will affect you, contact Doug Deeth (ddeeth@dww.com) or Nicholas Whalen (nwhalen@dww.com).