Blog Post
Back to all blog posts
TheSpotlight

Amendments to Canadian Patent Rules Coming Into Force October 3, 2022

By: Lola A. Bartoszewicz , PhD, Kimberly A. McManus , PhD and Peter S. L. Wong , M.A.Sc.

On October 3, 2022, amendments to the Canadian Patent Rules will come into force, introducing changes to patent prosecution in Canada. The most significant of these changes are excess claims fees and a new continued examination procedure.

In general, additional costs and the applicability of new procedures/actions introduced by the amendments may be avoided by requesting examination of an application before October 3, 2022.

Please contact a member of our  Intellectual Property Group if you have any questions about how the amended Patent Rules may affect your patent applications.

1.         Excess Claims Fees

Currently, there is no government fee based on the number of claims in a Canadian application.

The amendments to the Patent Rules will impose a fee of $100 CAD for each claim in excess of 20 claims. The calculation of excess claims fees will be based on the greatest number of claims pending in the application at any time beginning on the date examination is requested and ending on the date that the final fee is paid.

Strategic Options to Avoid/Minimize Excess Claims Fees:

Before October 3, 2022 If examination is requested 
on or after October 3, 2022 
 
  • Request examination to avoid excess claims fees.
  • Consider national phase entry/regular convention filing with a simultaneous request for examination.
  • If a lack of unity has been raised during prosecution and you are considering filing divisional application(s), file the divisional application(s) with a simultaneous request for examination.
 
  • Reduce claim numbers by filing a voluntary amendment before or together with the request for examination.
  • Take advantage of multiple dependent claims, which are counted as single claims.


2.         Request for Continued Examination

Currently, there is no limit to the number of office actions that can be issued before receipt of an allowance or a final action.

Under the new continued examination procedure, a request for continued examination and payment of a prescribed fee will be required to respond to a third office action and every second subsequent office action thereafter.  

Strategic Options to Avoid Continued Examination Fees:

Before October 3, 2022 If examination is requested 
on or after October 3, 2022 
 
  • Request examination to avoid the continued examination procedure.
  • Consider national phase entry/regular convention filing with a simultaneous request for examination.
  • If a lack of unity has been raised during prosecution and you are considering filing divisional application(s), file the divisional application(s) with a simultaneous request for examination.
 
  • Consider including more than one independent claim to maintain safe options for potential divisional applications to avoid double patenting.
  • Request examination under the Patent Prosecution Highway.
  • Delay the request for examination until claims are allowed/granted in a corresponding foreign application, and thereafter file an amendment with the request for examination to conform the claims to the allowed/granted foreign claims.
  • Should additional time be required to respond to an office action while awaiting conclusion of foreign counterpart prosecution, consider not replying to the office action by the due date, and reinstate the application within 12 months of the due date by filing a response to the office action and paying the prescribed fee.
  • Consider requesting withdrawal of an office action if it contains obvious Examiner errors or if it is sent late by the Canadian Intellectual Property Office.


3.         Conditional Notice of Allowance

The amendments to the Patent Rules introduce a new Conditional Notice of Allowance identifying minor defects for correction with the payment of the final fee.

4.         Reopening Prosecution After a Notice of Allowance

Currently, an applicant can request withdrawal of the notice of allowance with payment of a prescribed fee to reopen prosecution and file additional amendments.

After receiving a notice of allowance or a conditional notice of allowance, the new Patent Rules will require the filing of a request for continued examination and payment of a prescribed fee, which reopens prosecution to permit the filing of an amendment.

Related Areas of Expertise