Patent Rules

Marginal note:Prescribed fee

• 112 (1) Subject to subsection (5), for the purposes of subsection 46(1) of the Act, the prescribed fee to maintain the rights accorded by a patent issued under the Act in effect is, for an anniversary date set out in item 25 of Schedule 2 that falls on or after the day on which the patent was issued,

  • (a) the applicable small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in accordance with subsection (3) in respect of the patent, or in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted,

    • (i) on or before that anniversary date, or

    • (ii) if a notice is required to be sent under paragraph 46(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of six months after that anniversary date and the end of two months after the date of the notice; and

  • (b) in any other case, the standard fee set out in that item for that anniversary date.

• Marginal note:Small entity status condition

  (2) The small entity status condition is that

  • (a) in respect of a patent granted on the basis of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has fewer than 100 employees or is a university, other than

    • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more, or

    • (ii) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has 100 employees or more;

  • (b) in respect of a patent granted on the basis of a PCT national phase application, the applicant of the application on the national phase entry date is, on that date, an entity that has fewer than 100 employees or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and

  • (c) in respect of a patent granted on the basis of a divisional application, the applicable requirements set out in subsection 44(2) are met in respect of the original application.

• Marginal note:Small entity declaration

  (3) A small entity declaration must

  • (a) be filed with the Commissioner in a document other than the abstract, the specification or the drawings of the application on the basis of which the patent was granted, that identifies the patent to which the declaration relates;

  • (b) contain a statement that the patentee believes that the small entity status condition set out in subsection (2) is met in respect of the patent;

  • (c) be signed by a patent agent appointed in respect of that patent or by

    • (i) if there is a single patentee, the patentee,

    • (ii) if there is a single patentee and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the patentee and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,

    • (iii) if there are joint patentees, any one of the patentees, or

    • (iv) if there are joint patentees and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the patentees and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

  • (d) indicate the name of the patentee and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

• Marginal note:Non-application of subsection 3(1)

  (4) Subsection 3(1) does not apply in respect of the times referred to in subsection (1).

• Marginal note:Exception

  (5) For the purposes of subsection 46(1) of the Act, if a patent is granted on the basis of an application for a patent, in respect of which a fee was payable under subsection 27.1(1) of the Act for an anniversary of the filing date of the application that fell within the 12-month period preceding the day on which the patent was issued but that was not yet paid before that day, the prescribed fee to maintain in effect the rights accorded by the patent is, for the day of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued, the total of

  • (a) the unpaid fee,

  • (b) the late fee set out in item 26 of Schedule 2, and

  • (c) the fee prescribed by paragraph (1)(a) or (b) of this section for that anniversary, as applicable.