Don’t Miss the Notice: Five Strategies for Safeguarding Patent Rights Under Canada’s Due Care Standard

In Canada, requests to reinstate patent rights after a missed maintenance fee are subject to a “due care” standard. Since its introduction in 2019, this standard has proven to be difficult to satisfy – the success rate in reinstatement requests requiring a due care determination before the Canadian Intellectual Property Office (CIPO) is currently less than about 15%.[1] 

Importantly, the due care standard is only engaged after CIPO issues a formal “Commissioner’s Notice” advising of a missed payment and setting a further deadline to pay the outstanding fee. Failure to meet the deadline set by the Notice will trigger the due care standard.

The Commissioner’s Notice plays a critical role in CIPO’s assessment of due care. Accordingly, its proper handling is essential to preserving patent rights. This article outlines five strategies for managing the Commissioner’s Notice effectively and avoiding common pitfalls.

Overview of Canada’s Maintenance Fee Regime

Maintenance fees are due annually for all Canadian patents and patent applications, starting from the second anniversary of the filing date. Under the current regime, any person authorized by an applicant or patentee (“rights holder”) may pay the fee.

If a maintenance fee is not paid by the prescribed deadline, CIPO issues a Commissioner’s Notice warning that the payment was missed. The Notice also establishes a “late fee deadline” for paying the maintenance fee together with a late fee, this deadline being the later of: (i) six months after the original maintenance fee deadline; and (ii) two months after the date of the Commissioner’s Notice.

The Commissioner’s Notice is sent only to the Canadian agent of record. If no agent is appointed, then it is sent directly to the owner of record – or in the case of joint owners, the appointed common representative.

Failure to pay the required fees by the late fee deadline results in abandonment of the patent application, or, in the case of a granted patent, deemed expiry. Reinstatement (or reversal of deemed expiry) can be requested within 12 months after the late fee deadline, but only upon satisfying CIPO that the failure to pay occurred “in spite of the due care required by the circumstances having been taken”.

CIPO’s interpretation of the due care standard is very strict. According to its Manual of Patent Office Practice, the Office will assess “whether the applicant took all measures that a reasonably prudent applicant would have taken – given the particular set of circumstances related to the failure – to avoid the failure, and despite taking those measures, the failure occurred”. Measures taken after the failure occurred are not considered. 

Importantly, CIPO requires a demonstration that due care was exercised not only by the rights holder, but also by all persons authorized by them. Thus, if a rights holder instructs a Canadian patent agent through an outside counsel and has retained a third-party annuity service provider to attend to maintenance fee payments, each of these parties must each demonstrate that they exercised the due care required by the circumstances.  

Despite multiple judicial challenges, Canadian courts have upheld CIPO’s interpretation of the due care standard as “reasonable”. [2]
 

The Role of the Commissioner’s Notice

CIPO recognizes the handling of the Commissioner’s Notice as a prime indicator of whether due care was exercised. In a recent practice notice, the Office confirmed that it “focuses on the actions that were taken after the Notice was received” when assessing due care; by contrast, focusing on why the original due date was missed, without evidence of appropriate actions after the Notice, is unlikely to fulfill the due care standard.[3]

In practice, this means that all parties who receive a Commissioner’s Notice must take appropriate action to avoid prejudicing rights. For example, in a scenario where (i) an annuity service is responsible for maintenance fees and (ii) the Canadian agent reports to outside counsel, CIPO generally expects at least the following steps to occur:

1. The Canadian agent promptly forwards the Notice to outside counsel.
2. Outside counsel promptly forwards the Notice to the rights holder.
3. The rights holder ensures that the annuity provider is informed.
4. One of the parties takes appropriate steps to verify that the maintenance fee was correctly paid.
    

Common Pitfalls

The scenario outlined above exposes several opportunities for errors in the handling of the Notice, any of which could undermine a finding of due care. Some common pitfalls are summarized below: 

1. The Commissioner’s Notice is not received by a party due to outdated contact information

   CIPO generally expects all relevant parties to take steps to avoid a breakdown in communications. If, for example, the Canadian agent is unable to forward a Commissioner’s Notice due to outdated contact information, this would likely preclude a finding that due care was exercised.

2. The Commissioner’s Notice is not received by a party due to an inadvertently triggered spam/junk folder

   CIPO takes the position that due care was not exercised if a late fee deadline is missed because a Commissioner’s Notice went unnoticed as a result of a spam folder.[4]

3. Outside counsel receives a Commissioner’s Notice from the Canadian agent but does not forward it to the rights holder

   This may occur, for example, if outside counsel was previously instructed that they are not responsible for maintenance fees. In this circumstance, CIPO would likely conclude that due care was not exercised since the rights holder remained unaware of the deadlines.

4. Outside counsel notifies the rights holder of missed maintenance fee but does not forward the Notice

   CIPO requires all critical information in the Commissioner’s Notice to be relayed to the relevant parties. Therefore, it is not sufficient to simply advise the rights holder of the late fee deadline.

5. A party mistakenly assumes that a Commissioner’s Notice was sent in error

   This can occur when a party assumes that a maintenance fee was timely paid based on an error in its own internal records and therefore does not forward or act on the Notice. Mistakes based on such assumptions would likely be considered a failure to exercise due care.

Five Strategies for Handling Commissioner’s Notices

To help safeguard rights and ensure that due care is exercised, rights holders and outside counsel should consider the following five strategies when handling Commissioner’s Notices:

1. Keep contact information current

    Ensure that the Canadian agent and all authorized parties always have up-to-date contact information, including after patent grant. Any changes should be promptly communicated to the Canadian agent.

2. Always forward Commissioner’s Notices and confirm receipt

   If the Canadian agent reports to outside counsel, ensure that outside counsel forwards all correspondence relating to maintenance fees, even if they are not responsible for payment. Outside counsel should also request acknowledgement of receipt and, if none is received, follow up with the rights holder by alternative means (e.g., phone).

3. Verify unexpected Notices with CIPO

    If a Commissioner’s Notice is unexpectedly received and the fee appears to have been properly paid, instruct the Canadian agent to follow up with CIPO to confirm receipt of payment. Do not assume the Notice was sent in error. 

4. Document internal workflows

    Prepare and maintain an internal document outlining the company’s workflow for processing maintenance fees. If an isolated error occurs and reinstatement is necessary, this document can serve as evidence that multiple safeguards were in place, supporting a conclusion that the error occurred despite due care.

5. Delegate responsibility for maintenance fees to the Canadian agent

    Consider delegating responsibility for processing maintenance fees to the Canadian agent rather than relying on a third-party annuity service. Canadian agents have a strong understanding of the relevant rules and procedures and are well positioned to handle Notices correctly and avoid due care situations.

For further information, or to discuss strategies that are relevant to your patent portfolio, please reach out to a member of the Marks & Clerk patent practice group in Canada.

[1] At the time of writing, CIPO has reported 336 “final determinations” in due care matters; of these, only 48 requests have been successful: See https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patents/maintain-your-patent-application-or-granted-patent/reverse-expired-patent/determinations-related-due-care.

[2] Taillefer v Canada (Attorney General), 2025 FCA 28; Canada (Attorney General) v Matco Tools Corporation, 2025 FCA 156. 

[4] See e.g. Taillefer v Canada (Attorney General), 2025 FCA 28.