On October 3, 2022, the newest set of amendments to the Patent Rules in Canada will come into force. These amendments will bring about changes to patent prosecution in Canada. The key changes under these new Patent Rules are excess claim fees and the addition of a new continued examination procedure when exceeding three Office Actions.

Under the Canada-United States-Mexico Agreement (CUSMA), the Canadian Intellectual Property Office (CIPO) is obligated to introduce Patent Term Adjustment (PTA) provisions in order to meet its international obligations under the Patent Cooperation Treaty (PCT).

These regulatory amendments made by the CIPO aim to expedite the patent examination process to ensure efficient and timely processing of patent applications.

Excess Claim Fees

Presently, there are no limits or fees for the number of claims on patent applications requesting examination. On or after October 3rd, 2022, an excess claim fee will be implemented for applications with more than 20 claims. The fee for each excess claim over 20 claims will be $CAD 100 (or $CAD 50 for small entities). Excess claim fees are calculated at the time examination is requested, and again upon issuance of the patent. Excess claim fees will be due at the time of paying a final fee if excess claims result from prosecution. However, no refund will be issued if claims are reduced during prosecution.

When requesting an examination of a patent application on or after October 3, 2022, there are three possible approaches for minimizing claim fees under the new Patent Rules.

  1. Limit claims. At or before examination, limit the claims of the application to twenty.
  2. Revise claims to multiple-dependent claims.  A multiple-dependent claim that refers to more than one preceding claim will count as a single claim and thus may minimize claim fees.
  3. Revise claims to list alternatives within a single claim. Multiple claims listing alternatives may be reduced to a single claim with all those alternatives. However, the danger with this type of claim format is that the claim may be found wholly invalid if any one of the alternatives is unpatentable.

Request for Continued Examination

There will be a limit on the number of permissible Examiner Requisitions (also referred to as Office Actions or Examiner Reports) issued by the Patent Office. As of now, the payment of a single examination fee allows the applicant to prosecute its application until allowance, abandonment, or a final office action is issued regardless of the number of Requisitions issued. Once the amendments to the Patent Rules come into effect, the Patent Office will be limiting the number of Requisitions to three. Further examination of an application will require the filing of a Request for Continued Examination (RCE) and the payment of further government examination fees (currently $CDN 816 for large entities and $CDN408 for small entities). The applicant must make a request for continued examination and pay the prescribed fee not later than four months after the day on which a notice is sent. An RCE provides the applicant with two additional Requisitions. Once these two additional Requisitions are utilized, another continued examination can be requested. Additional RCEs can be requested as long as the applicant pays the fee, and the continued examination is requested within four months of the received notice. This process may continue until allowance, a final office action is issued, or abandonment of the application.

If Applicants have an allowed or issued patent application in another jurisdiction, they may wish to proceed by Patent Prosecution Highway (PPH). Requesting examination under the PPH should be made at the time of a request for Canadian examination since, once an examiner’s report has been issued, an application can no longer proceed via PPH.

Conditional Notice of Allowance

The amendments to the Patent Rules introduce a new Conditional Notice of Allowance (CNOA) in which the Examiner identifies minor defects for correction with the payment of the final fee. The Examiner then sets a four (4) month deadline to correct these defects. The Applicant may then only amend the defects noted in the CNOA when filing a response. This change aims to expedite the allowance process when only minor defects remain in an application.

This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.

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