Consider requesting examination of your Canadian patent applications now!

…..to avoid significant fees coming to Canada’s Patent Examination Regime

On October 3, 2022 there will be significant changes to Canada’s Patent Rules, to introduce excess claim fees and a continued examination regime, with significant new government fees.

The new Rules and their requirements will only apply to Canadian patent applications for which examination is requested on or after October 3, 2022. In contrast to previous reports, there will NOT be a 30 day grace period after this date for applicants to avoid the new Rules.

• For existing patent applications in Canada – Applicants should consider requesting examination as soon as possible (well before October 3, 2022) to avoid the new Rules.
• For future patent applications in Canada – Applicants should consider early national phase entry in Canada, or early filing in Canada, together with a concurrent request for examination, well before October 3, 2022, to avoid the new Rules.

The most significant upcoming changes under the new Rules are summarized below:

Excess Claim Fees

• Excess claim fees, of $100 (approx.) for each claim over 20, will be payable upon requesting examination. The excess claim fees will be reassessed when paying the final fee to determine if additional excess claim fees are required based on the largest number of claims pending at any time after requesting examination.

Prosecution Limits and Requests for Continued Examination

• The new continued examination regime will introduce a requirement to pay additional examination fees to continue prosecution after issuance of three Office Actions, and then again after every two Office Actions thereafter.

Conditional Allowances

• Issuance of a “conditional allowance” will provide an opportunity to correct minor formality defects in an application that would otherwise be allowable.

The above information provides only a brief summary. For more information on the new Patent Rules, or for advice for any particular patent application, please contact us directly at email@kirbyip.com .

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