Government Amends Patent Act to Remedy the Small Entity Fee Debacle

In our December 30, 2004 bulletin (no. IPB2004-5, located at http://www.torys.com/publications/pdf/IPB2004-5.pdf), we described the small entity fee debacle highlighted by the decision in Barton No-Till Disk Inc. v. Dutch Industries, and we reported that the federal government had introduced amendments to the Patent Act (in Bill C-29) to allow patent holders to retroactively correct the situation. Bill C-29 has now been passed and will be proclaimed into force on February 1, 2006. Patent holders will have one year from the date of proclamation (i.e., until February 1, 2007) to correct small entity designations for the applications or patents. Patent holders that do not make corrections within this period risk having their patents invalidated if a claim to small entity status is determined to be incorrect.