Important changes are proposed to Canadian patent prosecution

Parliament Ottawa

The Government of Canada is proposing regulatory amendments to the Canadian Patent Rules. The proposed amendments were published on July 3, 2021 and the public has 30 days to provide comments[1]. The final rules are expected to be published in fall 2021 and implemented in late 2021.

According to the Government, the broad objectives of the proposed amendments are the followings:

  • to increase the efficiency of the patent examination process;
  •  to reduce the average number of examination reports required prior to disposal of a patent application;
  • to reduce the average number of claims in patent applications;
  • to ensure that the sequence listing standard in the Patent Rules remains aligned with the international standard in the PCT; and
  • to introduce important new safeguards to prevent loss of rights.

New to the Canadian patent system would be issuance of a maximum of three examination reports. Applicants could elect to continue examination by making a request for continued examination (RCE) and paying a new prescribed fee[2]. It is also proposed that the new RCE mechanism would replace the current mechanism of withdrawing an application from allowance and returning it to examination.  This would increase the cost of this step for standard entities[3].  For small entities, the cost of this step would remain the same due to the reduced cost for a RCE for small entities.

Currently, there is no limit on the number of claims in a patent application, nor are there any additional fees for large numbers of claims. It is proposed to introduce a new fee for excess claims over 20 claims[4]

Further to the above proposals to encourage applicants to file compact applicant sizes and to reduce the average number of examination reports, there is a proposal for a new notice from CIPO to applicants named a “conditional notice of allowance”, where an applicant would be informed that the application is in condition for allowance, but certain minor defects in the application must be addressed. This will allow applicants to address the defects and pay the final fee, without needing to go through an additional round of examination, such as an RCE.

The proposed amendments further include necessary modifications for patent applications related to biotechnology that comprise a disclosure of nucleotide and/or amino acid sequences. The amendment will ensure compliance with new electronic sequence listing requirements of the PCT regulation (i.e. WIPO’s Standard 26 (ST.26)).

The proposed modifications also comprise housekeeping amendments and other minor amendments, including an extension of time mechanism for incorrect fee payments as a result of erroneous information provided by the Canadian Intellectual Property Office (CIPO), waivers for extensions of time to respond to examination reports when there are significant delays in the delivery of communications from the Patent Office (the Office), and the ability to correct errors in translation of certain documents provided to CIPO.

Interestingly, these changes are a first step toward implementation of a Patent Term Adjustment (PTA) compensation system in Canada. It is recalled that under the Canada-United States-Mexico Agreement (CUSMA) that was signed by Canada in 2018, each jurisdiction must adjust the term of a patent to compensate for unreasonable delays in the issuance of the patent. Since the PTA obligation applies to all patent applications filed on or after December 1, 2020, the government indicates that these changes are made with the objective to better streamline the patent examination process, with a view to avoiding unreasonable or unnecessary delays in the granting of patents. If implemented, the proposed amendments will certainly influence applicants filing and prosecution strategies. For instance, the claims fee will require applicants to file for more concise applications. Likewise, limiting the number of examination reports to three reports will encourage applicants to more quickly bring their applications into compliance with the Canadian Patent Act and Patent Rules. Fasken will keep you promptly informed of the publication of the final rules which are expected to be published this fall.

Learn more about our patent practice.


[1] Canada Gazette, Part I, Volume 155, Number 27: Rules Amending the Patent Rules (https://canadagazette.gc.ca/rp-pr/p1/2021/2021-07-03/html/reg3-eng.html)

[2] The proposed standard fee for a RCE is $816 and this fee would be reduced by 50% for small entities.

[3] The current cost to withdraw a notice of allowance and return to examination fee (as of 2021) is $408.00. As previously stated, the proposed standard feed for a RCE is $816.  This would make withdrawing an application from allowance and returning it to examination approximately double the cost for standard entities.

[4] It is proposed to set the standard fee for each excess claims over 20 at $100 (50$ for a small entity)

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Serge Lapointe, PhD
Serge Lapointe, PhD
Partner and Trademark Agent at | Website

Serge Lapointe has solid expertise in patent protection in the life sciences sector in Canada, the United States and abroad. Serge combines his vast knowledge and his experience when drafting patent applications and preparing opinions on the validity and infringement of biotechnology, pharmaceutical and chemical patents. He gets often involved into intellectual property due diligence investigations.

Robert Shek
Robert Shek
Associate and Trademark Agent at | Website

Robert is a lawyer and a registered trademark agent. He represents clients in all areas of technology, advising them on strategies for protecting and managing their intellectual property portfolios. As part of his practice, Robert places an emphasis on ensuring that his client’s intellectual property strategies align with their business objectives.