Introduction
Background
Trademarks
Patents
On June 6 2016 the Canadian Intellectual Property Office (CIPO) released consultation documents concerning trademark fees and patent fees. The documents set out CIPO's proposed fee changes resulting from 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; and
- an increase in the renewal fee.
On the patent side, the proposed fees are less 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.
In 2014 the government proposed to modernise Canada's IP framework to align it with international practices by ratifying or acceding to five IP treaties administered by the World Intellectual Property Organisation (WIPO).
Among the significant changes being made to the Canadian trademark framework is the adoption of the Nice Classification and 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 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 'obvious' errors, and rationalising the procedures for making amendments after allowance.
These legislative changes will result in certain changes to the current fee structure. Based on information provided by the government, the legislative changes affecting patent fees could be in force by mid-2017, whereas the changes affecting trademark fees are not expected to come into force before 2018.
Applicants are required to pay a C$250 application fee (when filed online) and an additional C$200 registration fee once the application has been allowed. Maintaining the current fee structure in the context of the Madrid Protocol would result in unnecessary complications and delays. As such, CIPO proposes to merge the application and registration fees into a new application fee (which is standard practice in 95 of the 97 members of the Madrid Protocol). The proposed fee for a single class would be C$330 (when filed online), which represents less than the sum of the current application and registration fees.
Under the present trademark regime, the C$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, CIPO proposes to follow in the footsteps of the United States, the United Kingdom, Mexico and members of the European Union by instituting a fee for each class (in contrast to an initial fee covering three classes and then a charge for each class thereafter). The proposed fees are C$100 for each additional class when filing a new application and C$125 for each additional class when renewing a trademark.
While the current fee to renew a trademark registration for a period of 15 years is C$350 (when filed online), with the renewal period reduced to 15 years, CIPO proposes a C$400 renewal fee (when filed online).
It is hoped that, with the proposed fees, trademark registration in Canada will become an attractive option for small first-time users. 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 or trademarks that are no longer needed. This should ensure the Register of Trademarks is up to date and accurately reflects the Canadian marketplace.
CIPO has proposed a late fee of C$150 for 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 reinstatement of an abandoned application is C$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 'obvious' errors. The current government fee payable with a request for correction of a clerical error is C$200. CIPO proposes the same fee of C$200 for correction of obvious errors under the amended Patent Act.
Similarly, the consultation proposes to retain the same fee amount of C$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 (C$6 per page in excess of 100 pages of specification and drawings). This is welcome news, as long sequence listings 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 (eg, 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. It is expected that proposed regulatory amendments will not be published for consultation until early 2017.
For further information on this topic please contact David E Schwartz or Tomek Nishijima at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email ([email protected] or [email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.