NEW INCREASE IN FEES FOR THE REGISTRATION AND

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NEW INCREASE IN FEES FOR THE REGISTRATION AND GRANTING OF INTELLECTUAL
PROPERTY RIGHTS IN CANADA
Laurent Carrière*
LEGER ROBIC RICHARD, L.L.P.
Lawyers, Patent and Trademark Agents
Centre CDP Capital
1001 Square-Victoria – Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 – Fax (514) 845 7874
www.robic.ca – [email protected]
Canada has always charged fees for the registration or granting of intellectual
property rights throughout its history. The current patent fees were last changed
in 1989, trade-mark and industrial design fees in 1985 and copyright fees in 1997.
A new fees structure was proposed in the 2003-03-08 issue of the Canada
Gazette Part I and should come into force on 2004-01-01.
Most of the fees have been increased (in some cases, they have more than
doubled) and communications through electronic means are favoured.
Subject to final approval by the Governor in Council, the following are the salient
points:
With respect to trade-marks
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Filing fees will be increased from $150 to $400 and the final fee for
issuance remains unchanged at $200;
It will cost $400 (as opposed to $300) to renew a registration;
An application to amend the register (change of name, legal form,
particulars of a defined standard, application for registration of a
licence or lien, etc.) will cost $50 for each trade-mark, registered or not
(as opposed to $25);
A fee of $100 (as opposed to $50) for each mark, registered or not, will
be charged for a request to recognize a transfer of ownership;
A fee of $125 (as opposed to $50) for an application for an extension
of time;
© CIPS, 2003.
* Of LEGER ROBIC RICHARD, L.L.P., a multidisciplinary firm of lawyers, and patent and
trademark agents. Published in the Spring 2003 issue (Vol. 7, No. 2) issue of our Newsletter.
Publication 068.054E. NOTE: the proposed governmental fees were not all adopted as
proposed.
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Requesting the issuance of a cancellation notice will entail a fee of
$400 (as opposed to $150) and the production of a statement of
opposition, $750 (as opposed to $250).
An on-line application for the registration or renewal of a trade-mark will result in
a saving of $50. Renewals, however, will only be possible where there are no
concomitant modifications (for example a change of name or address).
Even if the absence of fees by class renders Canadian trade-mark registration
quite affordable, it may be advantageous to proceed immediately to any
modifications in order to avoid this increase in fees.
With respect to industrial designs, there will also be increases. The fee for
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Examination of an application for registration of an industrial design will
have a base fee of $400 (increased from $150) with a supplementary
fee of $10 per page of designs in excess of 10 pages;
Maintenance of a registration of an industrial design (i.e. its renewal for
an additional term of 5 years after the initial term of 5 years) will
increase from $215 to $375;
Delaying registration will result in a charge of $100, the reinstatement of
an abandoned application will cost $200 and the fee for processing a
request for accelerated examination of an application to register a
design will be $500 (these fees do not currently exist).
With respect to copyrights, there have been no noteworthy changes other than
a discount of $15 for an online application for copyright in a work (artistic,
dramatic, literary or musical) or for copyright in subject matter other than a work
(performer's performance, sound recording or communication signal).
With respect to patents, the list of modifications to fees is quite lengthy owing to
the amendment of the patent rules. Amongst others:
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The fee for filing an application if the applicant is a large entity will be
$400 (rather than $300 and if the applicant is a small entity it will be
$200 (rather than $150);
On requesting the advance of an application for examination: $500
(rather than $100);
On filing an amendment: $400 (rather than $200);
For each page of specification and drawings in excess of 100 pages:
$10 (rather than $4);
On filing of an application to reissue a patent: $1600 (rather than $800);
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On requesting registration of a document (change of name,
assignment, licence, etc.): $100 per patent (without a sliding scale for
costs, which is presently the case).
It is important to note that this is merely a draft on the setting of fees. However as
this draft has already been the subject of numerous previous consultations and
several adjustments have already been made to these proposals, it is therefore
foreseeable that these fees will come into force, as is, on 2004-01-01. It may be
economically advantageous to proceed with the registration and maintenance
of intellectual property rights before the coming into force of these new fees so
as to avoid the effect of these increases.
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ROBIC, un groupe d'avocats et d'agents de brevets et de marques de
commerce voué depuis 1892 à la protection et à la valorisation de la
propriété intellectuelle dans tous les domaines: brevets, dessins industriels et
modèles utilitaires; marques de commerce, marques de certification et
appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits
voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés;
biotechnologies, pharmaceutiques et obtentions végétales; secrets de
commerce, know-how et concurrence; licences, franchises et transferts de
technologies; commerce électronique, distribution et droit des affaires;
marquage, publicité et étiquetage; poursuite, litige et arbitrage; vérification
diligente et audit; et ce, tant au Canada qu'ailleurs dans le monde. La
maîtrise des intangibles. ROBIC, a group of lawyers and of patent and
trademark agents dedicated since 1892 to the protection and the
valorization of all fields of intellectual property: patents, industrial designs and
utility patents; trademarks, certification marks and indications of origin;
copyright and entertainment law, artists and performers, neighbouring rights;
computer,
software
and
integrated
circuits;
biotechnologies,
pharmaceuticals and plant breeders; trade secrets, know-how, competition
and anti-trust; licensing, franchising and technology transfers; e-commerce,
distribution and business law; marketing, publicity and labelling; prosecution
litigation and arbitration; due diligence; in Canada and throughout the world.
Ideas live here.
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