Written By: Liz Gray (IP Lawyer)
Missing a patent fee deadline in Canada can cost far more than a late fee. If a late-payment deadline passes, reviving the patent or application requires proof that the miss happened in spite of “due care.” The Canadian Intellectual Property Office (CIPO) applies this test strictly, and most requests fail.
Here is what patent applicants, owners and their foreign counsel need to know.
When does the due care standard apply?
Due care must be shown in two situations:
- Request for examination. Examination must be requested within 4 years of the filing date. If that deadline is missed, CIPO sends a notice giving two months to request examination and pay a late fee. If that two-month deadline is also missed, the application is deemed abandoned.
- Annual maintenance fees. Maintenance fees are due every year, starting on the second anniversary of the filing date, for both pending applications and granted patents. If a fee is missed, CIPO sends a notice setting a late deadline of the later of 2 months from the notice or 6 months from the anniversary, which in practice is usually 6 months. If that deadline is missed, the application is deemed abandoned, or the patent is deemed to have expired as of the original due date.
In either case, getting the rights back requires showing that due care was taken to meet the late deadline.
Who has to show due care?
Everyone involved in the deadline: the applicant or owner, the Canadian patent agent, any foreign agents or attorneys, and any annuity service. Every link in the chain must show that it took due care and that the failure happened anyway. A strong system at one link will not cover a gap at another.
What a reinstatement request must include
- A signed request for reinstatement and the reinstatement fee.
- The corrective action, such as paying the overdue fee or requesting examination, with any late fees.
- Detailed reasons explaining how the system for attending to the deadline was meant to work, why it did not work this time, and that the failure was isolated rather than the result of mismanagement, lack of awareness, lack of funds, or something foreseeable.
The failure does not have to be beyond all human control. CIPO has accepted isolated errors by experienced, well-trained staff and genuine software glitches within otherwise well-run, double-checked systems. It routinely rejects vague explanations, cash-flow problems, indecision, lost files during a restructuring, unmonitored inboxes, foreign associates unaware of Canadian rules, and annuity services or foreign counsel dropping the ball.
Act quickly, but don’t rush the reasons
A reinstatement request can be filed up to 12 months after the date of deemed abandonment or expiry. Unlike the “unintentional” standard used for some PCT matters, you do not have to show due care for the entire delay. The only date that matters is the missed late-payment deadline.
That gives you time to build a careful submission, and you should use it. The reasons will likely be your only chance, so support them with affidavits, system logs and a clear timeline. At the same time, the longer it takes to notice the failure, the harder it is to show that due care was taken to avoid it. Flag the problem quickly, then take the time to get the reasons right.
The odds are low
CIPO sets a high bar. Its published determinations show that fewer than 15% of due care requests have succeeded. If CIPO refuses, the application or patent stays abandoned or expired, and there is no further appeal within CIPO. Judicial review in the Federal Court is available, but the Court has so far upheld CIPO’s strict approach.
Practical steps to protect your portfolio
he law sets the standard; the following are our recommendations for staying well clear of it:
- Confirm who pays. Agree in writing who is responsible for each Canadian fee: you, your Canadian patent agent, foreign counsel or an annuity service.
- Treat CIPO notices as urgent. Make sure late-fee notices reach someone who will act on them right away.
- Build in a second check. Docket every deadline and have a second person or system confirm it was met.
- Call us immediately if something slips. Early action improves your position and gives time to prepare strong reasons.
If you hold Canadian patents or applications, or think a deadline may have been missed, contact our experts at BRION RAFFOUL to review your docketing and payment arrangements.
The legal basis is sections 46 and 73 of the Patent Act (RSC 1985, c P-4). See also sections 9.04.03 and 27.03.03 of CIPO’s Manual of Patent Office Practice and CIPO’s “Due Care” Observations. This article is general information, not legal advice.