October 3rd, 2023 marked the first year anniversary of significant changes in Canadian patent practice. Indeed, it is on October 3rd last year that new Patent Rules came into force, notably introducing excess claim fees and a Request for Continued Examination (RCE) framework. The new Rules were implemented for expediting prosecution and reducing the burden on examiners. This one-year mark represents a good milestone to review these changes, to discuss cost-saving strategies and to point ways to alleviate double patenting concerns.

Excess Claim Fees

Prior to the new Rules, Canada had no limit on the number of claims presented for examination and no fee associated with these claims. That is why it was not uncommon in Canada to see patents granted with over 100 claims, especially in the pharmaceutical field.

The new Rules have changed the game by introducing a CA$100 excess claim fee (about USD$75) for each claim over twenty. The claim fee is charged at two instances during prosecution of the patent application: 1) at the time of requesting examination, based on the number of claims presented for examination; and 2) at the time of paying the final fee, if more claims were added after requesting examination.

In order to avoid paying excess claim fees Applicants should consider streamlining the claim set with an appropriate Voluntary Amendment before or when requesting examination. For example, this may include merging some claims or using multiple dependencies (no extra cost) in the claims to minimize the total number of claims. However, for reasons explained hereinafter, Applicants should avoid cancelling claims directed to a "different" invention to maintain filing rights to one or more Divisional applications.

Request for Continued Examination (RCE)

In the past, Canadian Examiners could issue any number of examination reports (office actions) until the application was in condition for allowance or was rejected in a Final Action (rarely). Accordingly, it was common practice to see the issuance of three or more examination reports before allowance.

The new Rules introduced a Request for Continued Examination (RCE) framework. At the third Examiner's report, an Applicant will have to file a RCE to respond to the last examination report and avoid abandonment. Another RCE will also be required to respond to every second subsequent Examiner's report. Currently the government fee for the RCE is CA$816 (about US$625).

The RCE framework also has an impact on the possibility of amendments after a Notice of Allowance (NOA). A RCE is now required to enter amendments once the patent application has been allowed. However, a RCE is not required if the amendment corrects obvious errors.

Applicants are thus encouraged to take proactive steps to minimize the number of Examiner's reports by filing a Voluntary Amendment when requesting examination to mirror amendments already made in other jurisdictions and/or by adapting the patent application to Canadian practice requirements. Scheduling interviews with the Examiner should also be contemplated.

Double Patenting Issue

The spectre of double patenting has not been addressed by the new Rules. Double patenting is prohibited in Canada and can occur when voluntarily filing divisional applications that may be granted with claims similar or obvious when compared to the claims of the parent patent. Unlike the United States, Canada does not allow continuation applications or terminal disclaimers of patent term that would address such issues of double patenting. Canada continues to apply strict rules regarding divisional applications. Applicants are wise to present all claims of interest in the parent application and wait for unity of invention objections from the Examiner before filing divisional applications. Such objections provide divisional applications with a legal shield against double patenting concerns.

Although possible, the voluntary filing of divisional applications (without a previous unity of invention objection) is strongly discouraged because of inherent risks of double patenting. Indeed, obviousness-type double patenting can easily occur if the claims of a voluntarily filed divisional application are seen as obvious in view of the claims granted in a parent application. Such double patenting concerns may be raised by the examiner during prosecution of a divisional application or may still be raised as a ground for attacking the validity of the granted patent during subsequent litigation. To be on safe grounds the filing of a divisional application must have been directed by an Examiner via a unity of invention objection.

Therefore, if the description or drawings in a patent application cover more that one invention, it is critical for patent applicants to trigger a unity of invention objection. In the context of the new Rules, this may translate in paying extra claim fees to present claims directed to the "additional" invention(s) and also "spend" a first examination report for the examiner to issue a rejection for lack of unity of invention. It is only thereafter that Applicants will be safely entitled to a divisional patent application.

Strategies and Tips for Mitigating the Impact of the Changes

The biggest mistake an Applicant could do in view of the new Rules would be to prioritize excess claims fees over all else. Avoidance of these relatively modest fees should not be an applicant's sole priority. As mentioned above, it is essential to present claims for the different "inventions" contained in a patent application to trigger an objection based on lack of unity of invention hence avoiding the concern of double patenting. Reducing expenses should be balanced against the scope of the future patent and potential enforcement issues. Paying excess claims fees may be entirely justified when the inclusion of additional claims strengthens the patentee's proprietary position.

The following tips should be considered for Applicants, especially when working under a tight budget.

  1. Take your time... Excess claims fees are payable at the time of the examination request. Examination need not be requested in Canada until four years from the filing date (typically the PCT filing date). Deferring examination until closer to this deadline allows the time necessary to consider the events of counterpart foreign proceedings as well as commercial developments to ensure that important features are incorporated into or retained in the Canadian claim set.
  2. Streamline the claims set to focus on the core of the invention. Presenting claims that have more chance of success will avoid unnecessary rounds of examination. Also, deleting extra dependent claims would not preclude entry of further claim amendments at a later date to optimize the claim set.
  3. Think about all claims of interest and introduce multiple independent claims that could later be used in divisional applications after an Examiner raises a unity of invention objection. The divisional applications can be amended to add dependent claims that were not in the parent application. This way, Applicants can avoid paying extra claim fees in the parent application.

Conclusion

The new Patent Rules which came in force October 3rd of last year, marked a shift of direction for Canadian patent prosecution. The new Rules were implemented for expediting prosecution and reducing the burden on examiners, resulting in potential cost overages and additional pitfalls to patent Applicants. More than ever, Applicants need to think strategically and consult Canadian patent agents towards reaching optimized outcomes, containing costs and avoiding validity concerns.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.