Canadian patents and patent applications may be jeopardized if annual maintenance fees are not paid on time. The Canadian Intellectual Property Office (CIPO) is under no obligation to alert anyone that a maintenance fee payment was missed or improperly processed before a potential loss of patent rights.

If a maintenance fee payment is missed, then CIPO is supposed to send a “late payment notice” affording the opportunity to pay the missed fee late, together with a late fee. However, at the time of writing, CIPO is not sending such notices due to ongoing technical delays (discussed here).

Additionally, Canada enforces an exceptionally high “due care” standard to bring an application or patent back into good standing after an abandonment or expiry due to failure to timely pay a maintenance fee. Reliance upon due care reinstatement should be avoided.

Applicants and Patentees Should Know That

CIPO halted the issuance of maintenance fee late payment notices in May 2024, and they are not expected to resume until at least June 2025 (CIPO Status Updates).

In view of these disruptions, patentees should be exceptionally vigilant to ensure they, or their responsible agent or annuity payment service, timely pay all maintenance fees.

Certain rights can be lost before CIPO issues any late payment notice, as third party rights begin automatically six months after a missed maintenance fee deadline, if the maintenance fee remains unpaid.

During the third party rights period, parties who practice an invention or make serious preparations to do so can acquire certain transferrable rights for the life of a patent.

The third party rights period commences independently of any other deadlines related to the missed maintenance fee payment.

Rights to many patents and applications have been lost in recent years due to failure of the applicant or patentee to successfully demonstrate “due care”, where in many cases the abandonment of the patent application, or the expiry of the patent, was due to miscommunications between parties regarding responsibility for the payment of the maintenance fees.

Risks can be increased when the responsibility for paying maintenance fees is split between various parties, or between agents and annuity payment services.

The Current Landscape

Unreliable Public Records: The ongoing disruptions at CIPO due to IT upgrades have resulted in technical difficulties when paying maintenance fees, which sometimes prevent parties from paying fees, especially during the late payment period. In addition, the online CIPO records can include inaccurate patent records, status information, and other technical issues. Determining whether a maintenance fee has been paid solely based on the CIPO’s public records should be avoided at this time.

No Late Fee Notices for Missed Payments: The CIPO is required to issue a late payment notice when a maintenance fee payment is missed,[i] which in some cases may extend the late payment period (the late payment period expires the later of six months from the missed deadline or two months from the date of the notice). In the past, such late payment notices have functioned as a failsafe to notify an applicant/patentee or their agent that a maintenance fee payment has been missed, well in advance of any potential loss of rights. However, the cessation of issuance of such notices may put patent rights at risk, as the third party rights period is determined independently to the issuance of a late payment notice.

Third Party Rights

Third party rights are triggered automatically six months after the missed maintenance fee deadline, if the maintenance fee remains unpaid. Any party who conducts an act, or even makes serious and effective preparations to commit an act, that would otherwise constitute infringement, will not be considered an infringement under third party rights provisions. This allows others to acquire selected rights to an invention when rights are deemed “uncertain”.[ii]

Third Party Rights Continue for Life of the Patent: Third party rights may continue after an application/patent is returned to good standing, and extend until the expiry of the patent.

Transferrable: Acquired third party rights, which may include use of an article or service, and/or making or selling of an article, are transferrable to another entity.

Avoid Entering the Third Party Rights Period: Applicants and patentees should ensure payment of maintenance fees within 6 months of the original maintenance fee deadline to avoid triggering third party rights, particularly during the current disruptions at CIPO, and the absence of CIPO sending late payment notices.

Due Care

If a missed maintenance fee is not paid together with a late fee before the expiry of the late fee period, then an application will be deemed abandoned or a patent will be considered expired. CIPO may send a courtesy notice of abandonment/expiry, but this is not required.[iii] Reinstatement in such cases requires demonstration that the failure to take the action occurred in spite of “due care” by all parties involved.

The due care standard has been determined to be exceptionally high. As of writing, only approximately 13% of determinations have concluded that due care had been taken, thereby to justify reinstatement or reversal of patent expiry (CIPO’s Determinations on Due Care). This standard of “due care” is much higher than the “unintentional” standard applied in certain other jurisdictions. (see “Due Care” Observations from the Canadian Patent Office).

Proximate Cause of the Events that led to the Deemed Abandonment is Critical: In a recent decision in Matco Tools Corporation v Canada (Attorney General), 2025 FC 118 (Matco), the court determined that “a data migration error” that occurred when the responsibility for maintenance fee payments was transferred from one third party annuity service to another was a “proximate cause”, which was a “vital element of the ‘due care’ analysis” (Matco para. [40]). This decision is under appeal.

All Responsible Parties Must Practice Due Care: Of the many cases where rights were entirely lost for failure to demonstrate due care, a large proportion resulted from miscommunications or a lack of communication between agents, applicants, foreign counsel, and/or third party annuity payment services. Due care requires a demonstration that all reasonably prudent measures were performed by all relevant parties (“Due Care” Observations).

Contingencies Must be In Place to Avoid Miscommunications: the Federal Court in Taillefer v. Canada (Attorney General), 2024 FC 259, concluded that even an unexpected break down in a system of email communication that had worked reliably in the past did not meet the due care standard, and that additional contingencies should have been in place in order to meet the due care standard.

Do not wait for the Issuance of Late Payment Maintenance Fee Notices to Resume: When notices resume, there will only be a brief two-month period from the date of a notice to take appropriate action to avoid abandonment or patent expiry. Notices are only sent to the applicants (if no agents are appointed) or their appointed agents, and NOT to other entities responsible for payment of maintenance fees.

Take Aways:

Certain rights may be lost to third parties six months after a missed maintenance fee deadline, potentially with no warning or notice from CIPO.

Demonstration of “due care” to reinstate a patent application, or to reverse expiry of a patent, following a failure to pay a missed maintenance fee within the late payment, period can be very difficult to achieve.

When an agent is not responsible for the payment of maintenance fees, they may not be aware that rights have been jeopardized by third parties for missed payments, especially at the time of writing where CIPO is not sending late payment notices to the agents.

Consider paying maintenance fees in advance.

If possible, avoid dividing responsibility for payment of maintenance fees between multiple parties, to avoid miscommunication or lack of communication.

[i] Patent Act, §§ 27.1(2)(b) and 46(2)(b)

[ii] MOPOP § 9.05, citing § 55.11 of the Patent Act and § 128 of the Patent Rules.

[iii] MOPOP § 9.02.03