Claiming Small Entity Status for Canadian Patent Applications
Rules, Potential Savings & Risks
Potential Savings: Canadian government patent fees depend on the size of the applicant entity, which may be either a “small entity” or “large entity”. Over the life of a patent, under the current schedule of government fees, a large entity will pay approximately $3000 more in government fees than a small entity.
Risk: The consequences for incorrectly claiming small entity status are potentially very severe: if fees are paid on a small entity basis when large entity fees should have been paid, the patent may be invalidated. In cases of doubt, this will likely become an issue in any infringement litigation brought by the patent owner thereby increasing the cost of the litigation far more than the potential savings.
The Test: Under the Patent Rules an applicant is disqualified as a small entity where, at the date of filing the Canadian application, the applicant:
(a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or
(b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.
The Filing: To benefit from the lower fees accorded to small entities, the applicant must submit a Small Entity Declaration.
Advice: When the facts are clear, the applicant can choose to proceed on a small entity basis. If there is any doubt, we strongly recommend proceeding on a large entity basis.
Our Policy: We will proceed on the basis that the applicant is a large entity unless we receive written instructions that the applicant is a small entity.
