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Amendments to Canada’s Patent Rules

June 23, 2023

Introduction

On June 21, 2023, amendments to Canada’s Patent Rules were published. The amendments introduce several significant changes to patent practice in Canada.  The most noteworthy change is a substantial increase (25%) in government patent fees that is set to take effect on January 1, 2024.  This post will outline a few important considerations for patent applicants and patent holders. 

Changes to Small Entity Status

In Canada, certain patent fees are reduced by 50% for applicants and patentees qualifying as “small entities”. A small entity is currently defined as an entity that employs 50 or fewer employees or that is a university, and does not include:
•    An entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; and
•    An entity that has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.

To alleviate the impact of the forthcoming fees increase, CIPO has taken measures to expand the small entity definition while maintaining the existing patent fees for small entities. Starting January 1, 2024, entities with less than 100 employees will be eligible to claim small entity status. This change offers an opportunity for more applicants and patentees to benefit from reduced fees under the revised tariff.

Impacted Patent Fees

The impending fees increase affects various patent fees, including many commonly paid fees:
    

A comprehensive list of the 2024 patent fee adjustments can be found here.

Future Considerations

Applicants and patentees may wish to evaluate their current and future patent strategies prior to January 1, 2024 when the changes to the Patent Rules come into force. 

Payment of certain patent fees before the fees increase may result in substantial cost-savings. Applicants may wish to file any new applications in 2023 to take advantage of the lower current filing fees. Other fees that may be paid early include: 
•    Any number of future maintenance fees
•    Examination fees for applications filed prior to January 1, 2024
•    Government fees payable with any divisional applications

For entities that would be eligible to claim small entity status (i.e., 50-99 employees) after the coming-into-force date, it would be reasonable to defer rather than advance payment of patent fees. In particular, entities that would qualify as a small entity under the amended Patent Rules may prefer to wait until 2024 to file a small entity declaration and pay any future fees that are due on or after January 1, 2024, rather than paying the fees at the 2023 standard rate.