Expect Additional Canadian Patent Rule Changes in 2022

The Canadian Patent Rules are undergoing further amendments to prepare for the patent term adjustment (PTA) obligations under the Canada-United States-Mexico Agreement (“CUSMA”). The amended Rules will take effect in respect of any application where examination is requested on or after the 30th day from the day on which the new Rules are registered. While it is difficult to predict when the new Rules will come into force, it is anticipated that the new Rules will come into force sometime before July 1, 2022.

These amendments will cause fundamental changes in Canadian patent practice, which, according to the Canadian Intellectual Property Office, are intended to ensure that patent applications are processed efficiently, with a view to avoiding unreasonable or unnecessary delays that could lead to excessive patent term adjustments. Most significantly the amendments will introduce excess claim fees and a limit on the number of Office Actions permitted during prosecution.

Excess Claim Fees

In the past, Canadian patent applicants have enjoyed the flexibility of introducing numerous claims to cover various aspects of their invention, without concern for costs associated with excess claim fees. This benefit will be lost when the new Rules come into force, bringing a new surcharge of $100 CAD for each claim in excess of 20. This fee will be due at the time of requesting examination and will be the same irrespective of claim type or nature of dependency (i.e., multiple dependencies will be permitted without additional cost). During prosecution it will be possible to introduce additional claims. However, the claim number will be reassessed at the time of paying the Final Fee, with additional excess fees payable if the total claim number has increased during prosecution.

Office Action Limits and Conditional Allowance

The new Rules will also impose a limit on the number of Office Actions that can be issued by the Examiner before ceasing examination. Specifically, only three Office Actions will be permitted before the application is allowed or “conditionally” allowed. The concept of a “conditional” allowance is newly introduced in the amended Rules to permit an Examiner to issue a Conditional Notice of Allowance (CNOA) providing applicants with an opportunity to correct minor “formality” defects in an application that would otherwise be allowable.

Request for Continued Examination

In the event that an application is not allowed after three Office Actions, then, under the new Rules, the applicant will be able to file a request for continued examination (RCE), which will allow the applicant to receive up to two additional Office Actions. Under this new regime, an applicant can file multiple RCEs, with the possibility of submitting new claims at each RCE filing. The cost for filing an RCE will be $816 or $408 at the standard or small entity rates, respectively. While this process is similar to the RCE process in the United States, it differs significantly in that the new Rules do not provide any opportunity for the applicant to drive prosecution to appeal. Rather, issuance of a Final Action will remain at the discretion of the Examiner.

Applicants wishing to avoid having the amended Rules applied to a currently pending application should consider filing a request for examination as soon as possible. Please contact us if you wish to discuss options in respect of any particular matters. We will continue to provide updates as the situation develops.