Issue 05/60 | December 1, 2005
Change To Canadian Patent Act – Top Up Payments

CIPO has announced that Bill C-29 will come into force on February 1, 2006, marking the start of the twelve-month period during which retroactive top-up payments can be made.


Amongst other things, the change is meant to address the severe consequences that may arise when small entity fees are incorrectly paid, as highlighted in the F.C.A. decision of Barton No-Till Disk Inc. and Flexi-Coil Ltd. and the Commissioner of Patents v. Dutch Industries Ltd., 24 C.P.R. (4th) 157 (hereinafter referred to simply as Dutch Industries). These consequences are lapse of a patent or irrevocable abandonment of an application.

According to Dutch Industries, a payment of a fee made incorrectly on the small entity scale cannot be corrected after one year from when the fee was due. The Act permits applicants and patentees to top-up all past insufficient fee payments, but for a limited time only, i.e. on or before February 1, 2007. After this date, the old law concerning top-up payments will once again apply.

To discuss this topic further, please feel free to contact the author Marcus Gallie, (mgallie@ridoutmaybee.com) at Ridout & Maybee LLP (www.ridoutmaybee.com), Ottawa, Canada.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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