CIPO has issued a practice notice waiving the requirement to pay difference between the amounts paid for certain $50 small entity maintenance fees up to today and the amount actually required as increased by the Service Fee Act because of incorrect information posted by CIPO. Accompanying amendments to the Patent Rules that came into force earlier this week address situations where fees are paid incorrectly as a result of erroneous information provided by the Commissioner of Patents.
Today’s Practice Notice, “Insufficient maintenance fee payments and associated waivers” states:
The fee amounts for the 2nd, 3rd and 4th anniversary small entity maintenance fees for applications and patents, due between 2021 and 2024, were incorrectly published on CIPO’s website and in notices to applicants and patentees. These fees were erroneously represented as being $50 and did not account for inflationary adjustments required by the Service Fees Act.
The accompanying email notice states that:
Amendments to the Patent Rules in relation to extensions of time for the payment of fees and the waiver of fees came into force on March 25, 2024. These amendments relate to situations where fees are paid incorrectly as a result of erroneous information provided by the Commissioner of Patents.
The amendments have been summarized as:
Rules Amending the PATENT RULES in order to grant the Commissioner the authority to (1) extend the period of time for the payment of fees when the Commissioner provided erroneous information in writing concerning these fees; (2) waive the unpaid portion of a fee that was the subject of an insufficient payment; and (3) put in place transitory measures, for a period of time after waiving fees for applicants and patentees that paid a fee at an incorrect amount.
[Update: See the Rules Amending the Patent Rules]
According to CIPO the issue relates to small entity maintenance fees paid in 2021, 2022 and 2023. CIPO charged applicants $50 but should have charged the following amounts. CIPO is waiving the difference for fees paid up to today.
| Year | Fee amount payable |
|---|---|
| 2021 | $51.00 |
| 2022 | $50.90 |
| 2023 | $52.63 |
| 2024 | $56.21 |
The problem may have arisen because the Services Fee Act, which started applying to patent fees in 2021 has an except for low-materiality fees which are defined in the Low-materiality Fees Regulations to be fees less than $51.
However, the low materiality fee exception does not apply to: “Fees set out in subparagraphs 30(a)(i), (b)(i) and (c)(i) and clauses 31(a)(i)(A), (b)(i)(A) and (c)(i)(A) of Part VI of Schedule II to the Patent Rules“. These sections refer to the small entity maintenance fees of the old Patent Rules, SOR/96-423 which were $50 at the time.