The Rules Amending the Patent Rules: SOR/2024-50 is a regulation introduced by the Canadian Intellectual Property Office (CIPO) to improve the handling of insufficient patent fee payments caused by administrative errors or unintended omissions. This amendment is designed to create a scalable solution for addressing widespread fee payment issues, particularly when errors affect multiple fee payers.

The amendment revises Paragraphs 3(4)(c) and (d) of the Patent Rules, primarily adding flexibility in cases where incorrect fees have been paid due to reliance on erroneous information. A key element of the amendment allows the Commissioner of Patents to waive the difference in unpaid fees if it is determined that the applicant or patentee was misled by incorrect fee information. In addition, a new provision, Section 139.1, grants the Commissioner the authority to waive fee differences under certain circumstances. This applies when the insufficient payment resulted from errors in information provided by the Commissioner. The Commissioner may also waive payments for other fee payers affected by the same erroneous information, provided the payment is made within a specified time frame.

CIPO, a part of Innovation, Science, and Economic Development Canada, is responsible for managing intellectual property in Canada. Since 2021, patent-related fees have been subject to annual adjustments under the Service Fees Act (SFA) and Low-materiality Fees Regulations (LMFR), though some fees are exempt from these adjustments. The existing rules under subsection 3(4) of the Patent Rules provide safeguards for fee payers who make insufficient payments due to administrative error or omission. However, these rules require fee payers to notify the patent office of the erroneous information they relied upon and request an extension, making them effective only in isolated cases. Recognizing the need for a more scalable solution to handle larger-scale fee payment errors, CIPO introduced this amendment.

The main objective of the amendment is to give the Commissioner of Patents additional powers to efficiently address insufficient fee payments, especially when administrative errors affect many applicants and patentees. The new rules allow the Commissioner to waive unpaid portions of fees in cases where erroneous information was provided, and when circumstances justify such waivers. Furthermore, the Commissioner can extend the payment period for fee payers without requiring them to take action, as long as the error originated from the patent office.

By granting the Commissioner the discretion to address these errors efficiently, the new rules reduce the legal and administrative costs for applicants and patentees. Overall, the Rules Amending the Patent Rules: SOR/2024-50 aim to provide a flexible and scalable system for handling insufficient payments, ensuring fairness and efficiency in managing administrative errors.

Canada (SOR/2024-50) April 10, 2024