As covered in the blog previously, Canada's patent regime has been undergoing significant changes. Our earlier posts about these changes and what steps patentees can take to mitigate the impacts of these changes can be found here and here. The amendments are meant to reduce prosecution time and streamline the examination process.
On June 2, 2022, the final text of the amendments to the Canadian Patent Rules was registered with the Orders in Council of Canada and is scheduled to be published on June 22, 2022. While some of the changes to the Patent Rules will come into effect on July 1, 2022, other, possibly more significant, changes to the Patent Rules have a coming-into-force (CIF) date of October 3, 2022. The significance of these amendments and the next steps for patent applicants in Canada are set out below.
These changes to the Patent Rules will undoubtedly affect patent applicants' prosecution strategies in Canada. We recommend that applicants review their patent applications to see what impact these changes could have. After reviewing our comments below, don't hesitate to reach out to us if you have any questions about the upcoming changes.
Excess Claims Fee
Under the current Patent Rules, applications may contain any number of claims without additional government fees. In the amended Patent Rules, there is a $100.00 CAD fee for each claim over twenty (20). Excess claims fees occur at two points in time during prosecution:
- At the time of requesting examination; and
- At the time of paying the final fee.
The amended Patent Rules now provide that at the time of paying the final fee (point 2 above), the excess claims fee will be calculated based on the number of claims in excess of twenty (20) claims that were "included in the application at any time" on the day after the request for examination (point 1 above) and the day on which the final fee is paid. This is an addition that was not provided in previously proposed changes.
As such, Applicants who wish to minimize excess claims fees will need to keep this provision in mind throughout prosecution.
The transitional provisions indicate that the excess claims fees in the amended Patent Rules will apply to applications that request examination on or after October 3, 2022. As such, if an Applicant wishes to avoid paying excess claims fees, they should consider requesting examination before October 3rd, 2022, the CIF date. This may be especially relevant in cases where additional claims are voluntarily introduced to induce a lack of unity rejection to avoid the voluntary filing of a divisional application. It is also recommended that Applicants consider incorporating multiple dependencies in their claims to minimize the total number of claims in their application. Multiple dependencies are not subject to excess claims fees in Canada.
Request for Continued Examination
Under the current Patent Rules, during prosecution an application can receive any number of examination reports (office actions) until the Examiner deems that the application is in condition for allowance.
A new procedure introduced in the amended Patent Rules is the Request for Continued Examination (RCE). After three (3) examination reports, an Applicant may file a RCE to avoid abandonment and continue examination, and pay the applicable government fee ($816.00 CAD, which is the same fee for currently requesting examination). After the first RCE, the Applicant is entitled to receive two examination reports, after which a subsequent RCE is required to continue examination, after which the Applicant is entitled to receive another two examination reports. The process will continue repeating, where each subsequent RCE entitles the Applicant to two additional examination reports.
The introduction of the RCE will impact applications that request examination on or after October 3, 2022. With the added fees and the limitation on the number of examination reports, applicants should consider requesting examination before October 3, 2022, or if examination is requested on or after October 3, 2022, applicants should consider taking proactive steps to try and minimize the number of examination reports during prosecution.
The new RCE practice will also impact how applications could be amended after a Notice of Allowance. In the amended Patent Rules, where the Applicant wishes to make amendments to the application after a Notice of Allowance has been received, the Applicant can no longer request the withdrawal of the application from allowance, but rather will need to file an RCE. The exception to this is if there is a correction of an obvious error.
Other Changes to the Patent Rules
Other less significant changes include the introduction of a Conditional Notice of Allowance, allowing an Applicant to correct minor defects within a four (4) month deadline, provisions to allow the correction of obvious errors in translations, and changes to comply with the Patent Cooperation Treaty (PCT) sequence listing standard.
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.
