IP Budgeting for 2024: Canadian Intellectual Property Office fees will increase by +25%
Recent legislative amendments will significantly increase most government fees for IP services payable at the Canadian Intellectual Property Office (CIPO) effective January 1, 2024. This reflects a one-time 25% increase over 2023 fees, in addition to an annual fee adjustment, for a total increase ranging from 25% up to 36% depending on the fee. CIPO has not substantially adjusted its fees in 20 years. The fee increases are intended to address increases in inflation, labour costs, application volumes, and IT investments.
Below provides an overview of fee increases, and considerations to help manage IP budgets in Canada between 2023 and 2024.
Patents
Common patent fees that are increased include: the application filing fee (and fee for national phase entry), from $420 to $555; the examination fee (and request for continued examination fee), from $815 to $1110; the final fee, from $305 to $420; and the year-2 maintenance fee, from $100 to $125.
To minimize fees, regular applications, national phase applications, and divisional applications (often with numerous catch-up maintenance fees) can be filed in 2023 at 2023 fees. Fees due after January 1, 2024 (such as maintenance fees and examination fees) can be paid in 2023 at 2023 fees.
Currently, certain fees for obtaining and maintaining a patent are discounted by 50% if a “small entity condition” is met. Effective January 1, 2024, the definition of “small entity” will be expanded to an entity that has fewer than 100 employees (instead of 50 employees or less), while largely maintaining most current fees payable by small entities (subject to the annual fee adjustment but not the one-time 25% increase). The small entity status condition will be that:
(a) in respect 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 an international 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 divisional application, the applicable requirements of this small entity condition are met in respect of the original application.
An entity status is determined once, at the filing date of a regular application (or at the national phase entry date of a national phase entry application); the status is not redetermined at any other time. For example, if a company consisting of 10 employees as of the filing date or the national phase entry date receives small entity status but subsequently grows to more than 100 employees, it still qualifies as a small entity. Since entity status is determined only once, Applicants who qualify under the expanded definition, but not the current definition, would need to wait until the expanded definition comes into force on January 1, 2024 to file an application, submit a small entity declaration, and pay fees at small entity rates.
Trademarks
For trademark applications and registrations, most government fees are increasing by about 32%. This follows 2019 fee changes that coincided with legislative changes, including as a result of Canada implementing the Nice Classification System, which introduced per-class filing and renewal fees to Canada.
In 2024, the government fee to file a Canadian trademark application is increasing to $460 for the first class and $140 for each additional class (from the current fees of $350 for the first class and $105 for each additional class). The fee for renewal is increasing to $555 for the first class and $175 for each additional class (from $420 for the first class and $130 for each additional class). Fees for recording assignments and other transfers of title are increasing from $100 per application/registration to $125 per application/registration.
Where year-over-year budgeting permits, trademark owners may wish to prioritize filing new Canadian applications in 2023. For example, applicants that are delaying a Canadian filing because a priority claim is available in 2024 may opt to file in 2023 before the expiry of the priority period in order to take advantage of the current lower government fees. Likewise, owners that prefer to file single class, rather than multi-class applications may wish to file in 2023.
Trademark owners that have held off on recording title changes in Canada may wish to proceed in 2023, particularly where large portfolios are implicated. (Note: a government fee is applicable to assignments and other transfers of title; there is no government fee to record a simple name change or address change.)
Registrants may prefer to renew in 2023 if possible. Canadian trademark registrations issued to registration prior to June 17, 2019, can be renewed for the first time at any time, and subsequent renewals along with registrations issued after June 17, 2019, can be renewed up to six (6) months in advance of the initial renewal deadline.
Fees for opposition and summary cancellation matters are also increasing commensurately. Potential opponents that have requested extensions of time may wish to proceed with oppositions before 2024, as the government fee for filing a Statement of Opposition will increase to $1050 in 2024 (up from $790). This may be of particular interest if there are multiple advertised applications at issue. Likewise, third parties that have delayed commencing summary non-use cancellation proceedings, may wish to do so this year, noting that the fee for commencing a summary cancellation proceeding will increase to $555 in 2024 (up from $420). This may be a particular point of frustration for Canadian applicants that are considering summary cancellation to clear the Register for the sole purpose of getting through examination but do not yet know the fate of their pending application(s) owing to significant Canadian examination backlogs.
Designs
Government fees for filing an industrial design application, including examination, will increase from $430 to $570 (plus $14 for each drawing page in excess of ten). The one-time maintenance fee is increasing from $376 to $500.
Copyrights
Copyright fees are also increasing. Government fees for filing an application to register a copyright will increase from $50 to $65. Government fees to record a copyright assignment or a license against a registration will increase from $65 to $80. Copyright owners that plan to proceed with a volume of copyright registrations and/or recordals may wish to prioritize proceeding in 2023.
Next steps
To review the notice published by CIPO, with a complete list of fee increases, please see here.
In view of the upcoming changes to CIPO’s fees, intellectual property owners may wish to proceed with Canadian IP matters in 2023; waiting for 2024 will result in 25-36% increased government fees. Further for patent matters, any assessment of small entity size should be exercised carefully.
The above content is intended for informational purposes only and does not constitute legal or professional advice. To obtain such advice and discuss strategies to help manage your IP budget between 2023 and 2024, please contact Marks & Clerk Canada.
All fees listed are approximate fees in Canadian dollars.
