Canada: Canadian Intellectual Property Office Conducting Consultations On The Proposed Changes To Current Trademark And Patent Fees

On June 6, 2016, the Canadian Intellectual Property Office (CIPO) released consultation documents concerning trademark fees and patent fees, which set out its proposed fee changes resulting from the amendments to the Canadian Trademarks Act and Patent Act. The deadline to submit comments is July 5, 2016.

The most notable changes to the trademark regime's fee structure, which will have practical implications, result from the merging of the application and registration fees into a single application fee, the implementation of the Nice Classification with corresponding fees for each additional Nice class, both at filing and at renewal, as well as an increase in the renewal fee.

On the patent side, the proposed fees are not as consequential and address, for instance, late fees relating to late payment of the application filing fee or maintenance fee, or late submission of the examination request and examination fee.

Background

In 2014, the Government of Canada proposed to modernize Canada's intellectual property framework to better align it with international practices by ratifying or acceding to five intellectual property treaties administered by the World Intellectual Property Organization (WIPO).

Among some of the significant changes being made to the Canadian trademark framework is the adoption of both the Nice Classification of goods and services as well as the Madrid Protocol, an international registration system that offers the possibility of obtaining protection for trademarks in a number of countries through a single international application filed with the International Bureau of WIPO.

Changes being made to the Patent Act focus on amendments for compliance with the Patent Law Treaty. These amendments will include permitting late payment of the application filing fee, late payment of maintenance fees, and late submission of the request for examination and the associated examination fee. Additional amendments to the Patent Act will include replacing the current provisions for correcting "clerical" errors with a mechanism for correcting instead, "obvious" errors, and rationalizing the procedures for making amendments after allowance.

These legislative changes will result in certain changes to the current fee structure. Based on the current information provided by the Government of Canada, the legislative changes affecting patent fees could be in force in mid-2017 whereas the changes affecting trademark fees are not expected to come into force before 2018.

Trademarks

Currently, applicants are subject to a CAD $250 application fee (when filed online) and subsequently, once the application has been allowed, a CAD $200 registration fee. Maintaining the current fee structure in the context of the Madrid Protocol would result in unnecessary complications and delays and as such, CIPO proposes to merge the application and registration fees into a new application fee, as is the practice in 95 of the 97 current members of the Madrid Protocol. The proposed fee for a single class would be CAD $330 (when filed online), which represents less than the sum of the current application and registration fees.

Under the present trademark regime, the CAD $250 application fee remains unchanged regardless of the number of classes of products or services covered by the application. With the adoption of the Nice Classification of goods and services, CIPO proposes to follow in the same steps as the U.S., the U.K., Mexico and members of the European Union by instituting a fee for each individual class (in contrast to an initial fee covering three classes and then a charge for each class thereafter). The proposed fees are CAD $100 and CAD $125 for each additional class over one class when filing a new application and when renewing a trademark, respectively.

As far as the renewal fee, while the current fee to renew a trademark registration for a period of 15 years is CAD $350 (when filed online), with the renewal period reduced to 10 years, CIPO proposes a CAD $400 renewal fee (when filed online).

While it remains to be seen, it is hoped that, with the proposed fees, trademark registration in Canada will become an attractive option for small first-time users. At the same time, with separate fees per class and an increase in the renewal fee, it is hoped that applicants and registered owners will be discouraged from over-claiming and renewing for classes and/or trademarks that are no longer needed. Ultimately, such should help ensure that the Register of Trademarks is up-to-date and an accurate reflection of the Canadian marketplace.

Patents

CIPO has proposed a late fee of CAD $150 for any of late payment of the application filing fee, late payment of a maintenance fee, or late submission of the examination request and examination fee. By way of comparison, the current fee for an extension of time, or for reinstatement of an abandoned application, is CAD $200.

The consultation proposes to retain the same fee amount when the current provisions for correcting "clerical" errors are replaced with a mechanism for correcting instead, "obvious" errors. The current government fee payable with a request for correction of a "clerical" error is CAD $200. CIPO proposes the same fee of CAD $200 for correction of "obvious" errors under the amended Patent Act.

Similarly, the consultation proposes to retain the same fee amount of CAD $400 when the unwieldly procedure for substantively amending an application after allowance is simplified.

The most significant point in the consultation document with respect to substantive fee changes is found in footnote 8, where CIPO explains that sequence listings in electronic form will no longer be included in the final fee calculation (CAD $6 per page in excess of 100 pages of specification and drawings). This is welcome news, as long sequence listings currently can add thousands of dollars to the issue fee calculation.

Notably, the amending legislation does not contain the specific procedural details surrounding the fees under review (e.g. late payment of the filing fee, or procedures for amendments after allowance). Those details will presumably be contained in associated amendments to the Patent Rules. Currently, it is expected that proposed regulatory amendments will not be published for consultation before early in 2017.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.