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The Canadian Government has amended the Patent Act to allow corrective payments on patents and applications in order to overcome the drastic results of the Canadian Federal Court of Appeal decision in Barton No-Till Disk et al v. Dutch Industries et al. (Dutch Industries).

However, many questions remain. For instance, the date at which small entity status is determined is ambiguous, and the definition of what constitutes a small entity has not been clarified by the Court of Appeal in Dutch Industries. As well, many other issues remain unresolved, and applications or patents that appeared to be in good standing following the Trial Division decision are now possibly invalid in view of the Court of Appeal decision. For example, if an application was filed as a large entity and a small entity declaration was subsequently filed to convert the status of the applicant to a small entity, the issued patent may be invalid.

Corrections may now be made, however, there is a limited time period by which the corrections must be effected. The amendments to the Patent Act may be used to resolve any potentially invalid patent or application in view of Dutch Industries, as long as a petition is filed setting out the fees that were incorrectly paid and providing a payment to supplement all government fees paid during the life of that patent or application. This has to be accomplished between February 1, 2006 and February 1, 2007.

All Canadian patents and patent applications filed since June 1985 must be reviewed by you to ensure that proper fees were paid, if they were paid at the small entity rate. If you wish to obtain a status report of the patent fees paid on any of your files, please let us know. Small entity is defined at art. 2 of the Patent Rules which can be found at: http://strategis.gc.ca/sc_mrksv/cipo/patents/c-29_small_entity_definition-e.html If you require a copy of the definition that existed between June 1985 and October 1, 1989, please let us know.

"Topping up" or corrective payments may only be made during the 12 month period mentioned above. This period will not be extended. If there is any doubt as to the status of an applicant or patentee, the safest option is to pay the regular or large fee. The topping up of all payments made at the small entity rate is an option that may be exercised during the above mentioned period.

If you wish our firm to make the topping up payments, please instruct us accordingly in writing prior to October 1, 2006.

Please note that starting February 1, 2006, our firm will no longer be filing new patent applications at the small entity rate.

Please go to the Canadian Intellectual Property Office website for further information on amendments to the Patent Act referred to as "Bill-C29".
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html

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