Cablegate: Canadian Patents: Maintenance Fee Appeal Upholds

This record is a partial extract of the original cable. The full text of the original cable is not available.




E.O. 12958: N/A


1. Summary - A March 2003 Canadian Federal Court decision
upholds an appeal to protect the patent rights of companies
that had inadvertently paid incorrect annual maintenance fees
and attempted to correct the mistake through subsequent
"top-up" fees. The judge determined that the appropriate
annual maintenance fee throughout the life of the patent will
depend on size of an entity at the time a patent application
is filed, and does not need to be redetermined each year to
account for the company's growth. The Canadian Intellectual
Property Office is reviewing the court decision and is
expected to publish official guidance within the next couple
of weeks. This is a victory for U.S. entities that were
concerned that their Canadian patent rights would be deemed
irrevocably abandoned due to past adjustments. End Summary.


2. Under the Canadian Patent Act, a patent applicant or
patentee must pay prescribed amounts, called maintenance
fees, on an annual basis in order to keep the application or
patent in good standing. In order to encourage small
enterprises and promote innovation, the Patent Act permits
"small entities" to pay reduced maintenance fees. Although
the patent rules are complex, generally speaking a small
entity is defined as an entity that employees 50 or fewer
employees or that is a university.

3. The Canadian Intellectual Property Office (CIPO) handles
the administration and processing of patents and other
intellectual property, but patent owners bear the onus of
determining their own entity status, and must accordingly pay
the appropriate fee to CIPO based on this determination.
According to the patent rules, failure to pay the appropriate
maintenance fee results in the patent being deemed abandoned
at which point the patentee has twelve months to reinstate
such rights. Failure to reinstate within the statutory
period results in the irrevocable loss of the patent rights.
The regulations are clear and have been consistently applied
when entities fail to pay any fees within the statutory
period. The regulations do not address the situation whereby
a "large entity" inadvertently determines that it qualifies
as a "small entity," or grows in size without correspondingly
adjusting its annual payments. There is no penalty if an
entity overpays.

4. It had been the long-standing policy of CIPO to accept
"top-up" maintenance fee payments from companies to correct
underpaid submissions. A patent holder who notified CIPO
that its entity status had changed from small to large could,
at any time, correct an originally insufficient payment by
paying the difference between the small and large entity fees
for the years that payments had been incorrectly made. Under
this practice the payment of a small entity fee when a large
entity fee was required did not trigger a "deemed
abandonment" determination of the patent rights.


5. An August 2001 Federal Court of Canada decision put a
stop to the practice of allowing "top-up" fees after the
twelve-month reinstatement period. In the dispute between
Dutch Industries and Barton No-Till Disk Inc/Flexi-Coil Ltd.,
the judge ruled that CIPO had no jurisdiction to "accept
corrective payments on account of the failure to pay the
prescribed maintenance fees within the required time." CIPO
issued an official notice on September 24, 2001, stating that
they would "not accept any corrective payments which are
submitted after a due date." Patent holders who had
previously made "top-up" payments to correct errors in the
determination of their entity status risked losing their
patent rights. Barton and Flexi-coil appealed the decision.


6. On March 7, 2003 a Federal judge upheld the appeal on the
grounds that the original decision was based on the incorrect
premise that the size of an entity must be redetermined
whenever a maintenance fee is due. She ruled that "a person
who meets the definition of small entity, when the patent
regime is first engaged maintains that status in relation to
that patent application and any resulting patent throughout
its term." If a company expands beyond the definition for a
"small entity" it is still only required to pay maintenance
fees for its original scale (small entity), and does not need
to "top-up" to account for its growth. If, however, a company
inadvertently applies for its original patent application as
a "small entity" when it is actually large, then it,s patent
will be deemed to have been abandoned from the beginning.
Copies of the Court's decision can be found on the web at: al121.html.

7. CIPO is currently reviewing the appeal decision and
expects to publish an official notice regarding changes in
procedure within the next few weeks. CIPO officials told
Econoff that although they are still digesting the details of
the ruling, the decision clarifies that the appropriate
maintenance fee throughout the life of the patent will depend
on size of an entity at the time a patent application is
filed, and does not need be redetermined each year to account
for the companies growth. This is a victory for entities that
faced the potentially catastrophic consequences of having
their patent rights deemed "irrevocably abandoned" due to
past adjustments.

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