Upcoming Changes to Canadian Patent Practice Could Mean Increased Costs. Can you take steps now to mitigate?
As part of the implementation of the patent term adjustment (PTA) obligation in the Canada-United States-Mexico Agreement (“CUSMA”), the Government of Canada proposed a series of amendments to the Canadian Patent Rules to better streamline the patent examination process.
As noted in our earlier blog post, the proposed amendments provided for a request for continued examination requirement and a new notice from the Canadian Intellectual Property Office (“CIPO”) to applicants named a “conditional notice of allowance”, both of which are designed to streamline the patent examination process.
Of particular note, CIPO would levy a new fee for excess claims over 20 claims with the goals of encouraging applicants to file compact applications.
While these changes are not in force yet, they are expected to come into force the middle of 2022. A thirty (30) days advance notice of the coming into force is expected.
The changes are set out in more detail below. We also set out below some suggested actions that applicants can take now to reduce the costs associated with the proposed rule changes.
1. Request for Continued Examination
The proposed changes will force the close of prosecution after the issuance of a third examination report. If the patent applicant wishes to continue prosecution and respond to the examination report, a mandatory Request for Continued Examination (RCE) will be required. The RCE Fee is announced at 816$CA (regular entity). Filing an RCE would allow for 2 more Examination Reports before a further RCE is required. The RCE could also be used to reopen prosecution after Allowance (for example to introduce further claims).
2. Conditional Notice of Allowance
The proposed changes introduce a “Conditional Notice of Allowance”. This practice, used at the discretion of an Examiner, will signal that correction of all identified minor defects along with the payment of the Final Fee will lead to patent grant.
3. Excess Claims Fees
Up to now, Canada has not levied any form of claim fees. The proposed changes will introduce Excess Claim Fees for any claims over twenty (20). The cost per excess claim is announced at 100$CA (regular entity). Of note, the new excess claim fees will not be payable at filing. Rather, the fees will be assessed and payable at two distinct junctures:
- When requesting examination. Requesting examination in Canada can generally be delayed for up to four (4) years from the filing date.
- After allowance. The standard final fee payment will increase for each claim above the number of claims for which a fee was paid at the time of requesting examination. This means that there should be no “double payment”
These new fees will not apply on applications where the request for examination has been filed before the coming into force of the proposed changes.
STEPS APPLICANTS CAN TAKE NOW
- Those with pending applications or having new applications to file, with more than 20 claims, should consider locking-in savings by filing and requesting examination before the new Rules come into-force.
- Even after the new Rules come into force, consider implementing voluntary claim amendments to reduce the number of claims before requesting examination.
- Since Canada has stricter requirements for voluntary divisional applications and does not have a US style Terminal Disclaimer practice, consider introducing all pertinent claims in a pending patent application despite excess claim fees.
- Consider re-introducing claims removed prior to requesting examination during prosecution as a possible means to increase claim scope.
Learn more about our patent practice.
Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.
Alain M. Leclerc is a patent and trademark agent and intellectual property lawyer. He advises, guides and represents clients in connection with intellectual property asset protection, with particular emphasis on drafting and obtaining patents.