June 15, 2022Calculating...

Amendments to Canadian patent examination rules come into force October 3, 2022

Canada’s federal government has finalized amendments to its Patent Rules, which introduce excess claims fees and a request for continued examination scheme. With the final amendments to the Patent Rules coming into force on October 3, 20221, the factors below should be carefully considered when reviewing patent prosecution strategy in Canada.

What you need to know

  • The final rules are similar to the proposed amendments published for public consultation on July 3, 2021 (read our bulletins “Coming soon: changes to patent examination in Canada” and “Changes coming to patent examination in Canada”); however, some changes have been made to the calculation of excess claim fees.
  • On October 3, 2022, two key changes to patent prosecution in Canada will come into effect as a result of the amendments to the Patent Rules:
    • Excess claims fees. Excess claims fees will be payable twice during prosecution. First, C$100 will be payable for each claim in excess of 20 claims2, calculated when examination is requested. Second, C$100 will be payable at the time the final (issue) fee is paid for each additional claim in excess of 20 claims, based on the greatest number of claims pending at any time from the day after examination is requested until the final fee is paid.
      • For example, if an application has 25 claims pending at the time examination is requested and in a response to an Office Action 6 more claims are added, the applicant will owe C$500 in excess claims fees when requesting examination and C$600 in excess claims fees when paying the final fee. In a significant departure from the draft version of the rules, the C$600 in excess claims fees would be required when paying the final fee, even if one or more of the added claims were cancelled prior to allowance.
      • A multiply-dependent claim will count as a single claim when determining excess claims fees. Also, each independent claim will count toward the total number of claims, but there will be no limits on the number of independent claims that can be included in the claim set.
    • 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 Action after that3. An RCE would also replace the current mechanism to return an allowed application to examination.
  • These excess claims fees and RCE fees will not apply to any application for which examination has been requested before October 3, 2022. Applicants wishing to avoid these fees may wish to consider requesting examination before October 3, 2022. The decision to avoid these fees should be made carefully in consideration of other factors such as advantages of deferring examination costs and leveraging foreign patents to streamline Canadian prosecution.
  • For applications where examination is requested on or after October 3, 2022, applicants will have the option of reducing excess claims 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 a patent agent prior to requesting examination to discuss options for proceeding.

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.

© 2022 by Torys LLP.

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