Coming soon: changes to patent examination in Canada

Proposed amendments to Canada’s Patent Rules are expected to significantly alter the Canadian patent prosecution landscape by introducing excess claims fees and requests for continued examination (RCE). The proposed amendments, which were published by Canada’s federal government¹, are aimed at streamlining the patent prosecution process and avoiding unreasonably/unnecessary prosecution delays. Although a coming-into-force date has not been formally announced, the proposed amendments are expected to be finalized and come into force sometime in 2022 (possibly by July 1, 2022)².

What you need to know

• The amendments are proposed in response to the patent term adjustment obligations under the Canada-United States-Mexico Agreement (CUSMA)³.
• The proposed amendments to Canada’s Patent Rules are not yet law and are subject to change, but they may arrive in the first half of 2022.
• To avoid the application of the changes, applicants must request examination of applications prior to any such amended Patent Rules being in force.
• If enacted as currently proposed, the amendments will introduce two key changes to patent prosecution in Canada:
  • Excess claims fees. C$100 will be charged for each claim in excess of 20 claims, calculated when examination is requested, and when paying the final fee for any additional claims in excess of 20 claims that were not paid when examination was requested. For example, if there are 30 claims when examination is requested and 35 claims when the final fee is paid, the applicant will pay excess claims fees of C$1,000 with the examination request and an additional C$500 with the final fee. No extra fees are proposed for claims with multiple dependencies.
  • Request for continued examination (RCE). If continued prosecution is desired after receiving three Office Actions, an RCE along with a fee of C$816 is required when responding to that third Office Action and for responding to every second Office Actions after that. An RCE would also replace the current mechanism to return an allowed application to examination.
  • Grandfathering. Excess claims fees and RCE will not apply to applications for which examination is requested before the amended Patent Rules come into force. As the notice period before coming into force may be quite short⁴, applicants may wish to start evaluating their Canadian patent portfolios now.

Strategic considerations

Currently the Canadian Intellectual Property Office does not charge any excess claims fees or RCE fees. The proposed changes are a significant change from Canada’s current flexible system of examination.

Applicants wishing to avoid excess claims fees and RCE fees may wish to consider requesting examination before the new Patent Rules come into force. However, the advantages of avoiding these fees should be carefully balanced against the advantages of deferring examination costs and leveraging foreign patents to streamline Canadian prosecution. As such, decisions should be made on a case-by-case basis, depending on factors such as the number of claims, request for examination deadline, and status of corresponding applications in foreign jurisdictions. Applicants should also bear in mind that the proposed Patent Rules may be amended or delayed, and so there is still some uncertainty regarding the exact nature and timing of the amendments.

Once the proposed excess claims fees are in force, applicants will have the option of reducing excess claims fees by filing a voluntary amendment with the request for examination. However, when deciding upon a claims strategy, special consideration should be given to Canada’s strict double-patenting regime and lack of continuation practice. We recommend consulting with a patent agent prior to requesting examination to discuss options for proceeding.

For a discussion of other proposed amendments expected to come into force at the same time, such as conditional notices of allowance and changes to sequence listing format, please read our bulletin “Changes coming to patent examination in Canada”. Changes to the sequence listing format, originally scheduled to come into force on January 1, 2022, have now been postponed until July 1, 2022.

What’s next

The proposed rules are still in draft form and subject to change. The consultation period has now closed. Once finalized, the amended Patent Rules will be registered by the Privy Council and published in the Canada Gazette Part II. Under the proposed Patent Rules, excess claims fees and RCE will come into force within 30 days of registration by the Privy Council⁵. Grandfathered applications will not be subject to excess claims fees or RCE.

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

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