Overview
The majority of the Canadian Intellectual Property Office’s (CIPO) fees will be increased by about 25% and the definition of a “small entity” for patents has been expanded to include organizations that employ between 50-100 employees.
The fee increase will affect patents, trademarks, copyright, industrial designs, and integrated circuit topographies. The adjustments, aside from the one-time 25% increase, also affect certain annual fees which are rounded to the nearest whole dollar amount. For example, the standard maintenance fee for a patent in its 5th-9th anniversary will increase from $210.51 (2023) to $277.00.
Exceptions to these changes include certain fees described in the October 3, 2022 amendments to the Patent Rules, such as excess claim fees which will remain at $100 per excess claim over 20.
The additional increase in patent fee amounts will not apply to organizations declared as small entities which will cover more entities in 2024 as set out in our article here.
Possible Action
CIPO’s increase in fees will affect the majority of patent, trademark, copyright, and industrial design applicants and owners. Those who wish to avoid paying the increased fees should take advantage of any ability to pay for certain fees prior to the changes coming into effect on January 1, 2024.
Summary of Changes
Patents
Examples of the changes to common patent fees include the following:
- Application filing fee – will increase to $555.00 from $421.02;
- Request for examination – will increase to $1,110.00 from $816.00; and
- Maintenance fee (2nd-4th year) – will increase to $125.00 from $100.00.
Patent holders who wish to avoid the upcoming increase in fees may pay their 2024 application, maintenance, and examination fees before January 1, 2024. In addition, entities with fewer than 100 employees should review the changes to the Patent Act and their ability to reduce their costs by declaring small entity status.
Trademarks
The majority of fees for trademarks will also increase once the amendments come into effect.
Examples of the changes to common trademark fees include the following:
- Application for registration of a trademark fee (first class of goods/services) – will increase to $458.00 from $347.35;
- Application fee per additional class of goods/services – will increase to $139.00 from $105.26;
- Statement of opposition fee – will increase to $1,040.00 from $789.43;
- Renewal fee (first class of goods/services) – will increase to $555.00 from $421.02; and
- Summary Cancellation (s.45) proceedings – will increase to $555.00 from $421.02.
Applicants should consider submitting their applications to register their trademarks before the end of 2023 to avoid the increase in fees, especially if their application contains multiple classes of goods and services. Trademark owners should also consider paying their renewal fees in advance of January 1, 2024, and proceed with expected opposition and summary cancellation matters before the new year.
Copyrights
Copyright applicants and owners also face an increase in the majority of copyright-related fees. Applications, if possible, should be filed prior to January 1, 2024 to avoid the higher costs. Other fees related to registered copyrights, such as copyright licensing, accelerated action requests, correction of clerical errors, or the addition of documents to the Register of Copyrights, can also be paid prior to the changes coming into force.
Examples of the changes to common copyright fees include the following:
- Application fee – will increase to $63.00 from $50.00;
- Assignment/licensing fee – will increase to $81.00 from $65.00; and
- Accelerated action request fee – will increase to $81.00 from $65.00.
Industrial Designs
Examples of the changes to common industrial design fees include the following:
- Application filing fee – will increase to $567.00 from $430.30;
- Additional filing fee for each photograph/graphic reproduction over 10 – will increase to $14.00 from $10.75;
- Transfer fee – will increase to $125.00 from $100.00; and
- Maintenance fee – will increase to $496.00 from $376.50.
Industrial design applicants and owners are also able to pay their fees prior to January 1, 2024 to avoid the increase in fees. Other fees impacted by the changes include the following: reinstatement of an abandoned application, advanced examination, and delaying the registration of a design.
The Reasoning
Since CIPO has not substantively adjusted its fees since 2004, its rationale for the fee adjustments includes the following factors: a 30% and 28% increase in inflation rates and labour costs, respectively, in the past 19 years; the rise of application volumes; and to obtain critical funding.
Notably, CIPO expressed that it is currently projected to run out of funds by September 2024, with a predicted shortfall of 17%. The 25% adjustment prevents this shortfall.
Conclusion
CIPO’s increase in fees will affect the majority of patent, trademark, copyright, and industrial design applicants and owners. Those who wish to avoid paying the increased fees should take advantage of any ability to pay for certain fees prior to the changes coming into effect on January 1, 2024.
Click here to view the full list of adjusted fees
Click here to view the 2023 amendments
This article is provided for informational purposes only and is not legal advice. For further information or assistance, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.