Canadian Patent Laws amendments
The final text for the previously announced amendments to the Patent Rules was registered at the Orders in Council of Canada on June 2, 2022, and it will be published in the Canadian Gazette on June 22, 2022, with many of these provisions taking effect on October 3, 2022. In consideration of the Canadian Intellectual Property Office’s (CIPO) commitment to include Patent Term Adjustment (PTA) provisions into Canadian Patent Law pursuant to the Canada-United States-Mexico Agreement (CUSMA), these new Rules aim to simplify the examination process.
The addition of excess claims fees of $100 per claim for each claim over and above 20 represents a considerable change from the way things were done before CIPO. The calculation of excess claims fees at allowance has been changed, even though the final wording mostly follows the proposed changes to the Patent Rules1 issued by the CIPO on July 3, 2021. Excess claims costs were formerly suggested to be determined by the number of claims at the time of seeking examination and the time of paying the final fee.
The final text, however, specifies that excess claims fees are payable at the time of requesting examination and will be taken into consideration when paying the final fee depending on the number of claims included in the application at any time between the request for examination and the payment of the final fee. As a result, if applicants intend to avoid paying excess claims fees, they must keep this clause in mind when submitting claim modifications throughout the prosecution. It is important to keep in mind, though, that for the purposes of determining claims fees, numerous dependents and claims in the alternative will still be treated as a single claim.
The addition of a Request for Continued Examination (RCE) process following three examination reports (office actions) is a second significant change. The maximum number of examination reports is reduced to two after the initial RCE request, after which another RCE is needed to continue the examination, and so on. Furthermore, an RCE request must be submitted in place of the present request for withdrawal of NOA proceedings if a Notice of Allowance (NOA) is obtained but further application revisions are requested (other than the correction of obvious errors). In any case, there will be an RCE charge that is equal to the standard examination fee.
For any application where the examination is sought on or after the coming-into-force date of October 3, 2022, the aforementioned rules regarding excess claims fees and RCE procedure shall take effect under the new Rules’ transitional provisions. Therefore, before October 3, 2022, an applicant must request an examination on any application that is already in the pre-examination stage if they want to avoid excess claims fees and restrictions on the number of examination reports.
The addition of a Conditional Notice of Allowance (CNOA), when the Examiner determines that the application would be admissible but for minor defects, maybe a less significant change, but it is still noteworthy. The CNOA sets a 4-month deadline to address these problems. When submitting the answer, only revisions related to the faults mentioned in the CNOA will be considered.c
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