Who pays maintenance fees in Canada?

Canada like many other countries requires that annual maintenance fee payments be made both in respect of patents and in respect of pending applications.  The first such annual fee is due no later than the end of two years after the Canadian filing date.  In the case of a PCT application, the first such annual maintenance fee is due by the end of two years from the international filing date.

Many applicants and firms choose to employ the services of an annuity fees payment agency such as Computer Patent Annuities - CPA in the Channel Islands, or MDC in Michigan.  These agencies can pay annual maintenance fees in Canada directly, once a patent has been granted.  But they must use the services of a local patent agent in order to pay annual maintenance fees in respect of a pending application.

 Under Canadian patent regulations, only the agent of record can correspond with the Commissioner of Patents in respect of a pending application.  This means that only the agent of record can pay the annual maintenance fee.  Cases have arisen where an inventor has, himself, endeavored to pay the annual maintenance fee.  Such payments will be rejected.  Indeed, a recent decision involved just such a scenario and, through confusion about the necessity to pay a reinstatement charge for late payment and the failure of the Canadian Patent Office to issue a notice of abandonment, the pending application became irretrievably dead:

Federal Court - Actelion Pharmaceuticals Ltd v. Canada
http://decisions.fct-cf.gc.ca/en/2007/2007fc425/2007fc425.html

Federal Court - Wicks v. Canada (Commissioner of Patents)
http://decisions.fct-cf.gc.ca/en/2007/2007fc222/2007fc222.html

When CPA or MDC are used to manage maintenance fee payments in respect of pending Canadian applications they must correspond with the locally-appointed registered Canadian patent agent.  Such local patent agent, taking instructions from the annuity agency, will pay the fees and then report to the agency together with their account for fees and services.  The annuities agency then reports to the client firm or foreign associate, adding their own charges on top of the charges of the Canadian patent agent.  Thus, in a sense, a double payment occurs.

 If a corporation or law firm wishes to transfer diarying procedures  to an annuity agency, then the extra charges incurred may be justified.  But the Canadian patent agent of record will provide a similar service in all events.