The government of Canada has increased the posted fees for patents, trademarks, industrial designs, and other IP. Expect at least a 25% fee increase in 2024 with a few exceptions.
A history of doing nothing and then thrashing
CIPO has increased fees in patent matters a few times in recent years following decades of frozen rates. The basic filing fee was $400 for as long as I can remember. Checking past versions of the Patent Rules (SOR/96-423) confirms this. The new rules in 2019 left this amount unchanged. (SOR/2019-251)
In 2020, CIPO announced that most fees at CIPO will increase annually. See the Service Fees Act (SC 2017, c 20, s 451) that allows government agencies to peg their fees to inflation. CIPO started doing so in 2021 with a modest 2% increase that required a lot more manual checking of each patent application or fee payment. So the increase was a burden without a gain in revenue.
In 2022 CIPO increased the fees again. See Patent Rules (SOR/2022-120). As of October 3, 2022, they added new fees and increased others. The new fees increased your costs. You started paying for each claim in excess of 20 when you request examination and a fee for continued examination of an application. Since applicants got used to not paying for these things the new fees had an effect. The increased filing fee, and final fees were minimal.
In 2023 CIPO proposed increasing fees by “25%” to address their “structural deficit”. It is very much a case of too much too late. They ran from 2004 to 2019 making no changes then make two changes in two years. Then CIPO asked for a 25% increase because the previous changes weren’t enough. In fact many of the changes are 32% and some of the increases are no fees set in 2022. So CIPO is thrashing.
Changes in 2024
Amendments to the Patent Rules, Trademark, and Industrial Design Regulations take effect 2024 Jan 1.
The basic fee for filing a patent application will increase from $421.02 to $555. The fee for requesting examination moves from $816 to $1,110. This is a steep increase but cheap by international standards.
Your maintenance fees are going up by 25 to 32%.
|Anniversaries||2023 Fee||2024 Fee|
|Second, third, and fourth||$100.00||$125.00|
|Fifth, sixth, seventh, eighth, and ninth||$210.51||$277.00|
|Tenth, 11th, 12th, 13th, and 14th||$263.14||$347.00|
|15th, 16th, 17th, 18th, and 19th||$473.65||$624.00|
The fee increase wasn’t a rational exercise. Again, this was too much too late. It is odd that CIPO which claims their fees are wrong yet they picked round numbers. A fee set in 2022 is going up 36% — request for continued examination. Also, note these key fees are increasing by over 30%. But the odd thing is the fees for integrated circuit topography registration went up. These are rarely used. CIPO loses money every time it updates its website since only ten registrations are made per decade.
There is good news
Yes, for 2024, we have one year of not having to specify fees to the cent. But better than that the definition of small entity was relaxed.
Small entity means fewer than one hundred employees
Small entities pay reduced fees. These are roughly half of standard rate. For example,
- Application fee (Small entity, 2024): $225.00
- Request for examination fee (Small entity, 2024): $450.00
A small entity is an organization with fewer than 100 employees (99 or less) or is a university. The relevant date is the date of the request for examination. And of course, if you are controlled directly or indirectly by an entity, other than a university, that has 100 employees or more you don’t qualify.
We advocate being conservative with this limit. Use headcount, not FTE. Include all employees on leave. Also consider if contractors, board members, or controlled companies would put you over the limit.
What should you do with this fee increase?
There are some obvious reactions to the fee increases.
If you have an examination request deadline due in 2024 or 2025 request now and pay lower fees.
If you have maintenance fees due in 2024 pay them in 2023. You can pay multiple years at once. This allows for substantial savings.
Think about the changes
Aside from the above it all depends. As a pharma company, you likely should change nothing. However, if you are in a fast-moving technology space you should file in 2023. Don’t wait for the time to expire under the Paris convention or PCT, file in 2023.
If you are a growing company, you can pay maintenance fees or request examination now to save money. Do so before you are 100 employees.
More on IP budgeting see Three ways to handle patent fee changes this year
For the changes in the fees see
- Amendments to the Patent Rules and Regulatory Impact Analysis Statement
- Amendments to the Trademark Regulations
- Amendments to the Industrial Design Regulations
Plan your IP costs
The principals at Perpetual Motion Patents have extensive experience as in-house IP managers and IP strategists. If you would like help responding to these fee changes, planning or implementing your IP program please do contact us.