Upcoming Changes to Patent Prosecution in Canada
Examination of Canadian patent applications will change significantly when a host of amendments to Canada’s Patent Rules come into force this year. The changes effective on October 3, 2022 are being introduced to streamline patent examination in preparation for the implementation of patent term adjustment (PTA) obligations under the Canada-United States-Mexico Agreement (“CUSMA”).
Most significantly, examination proceedings will be impacted through the introduction of excess claim fees and a limit on the number of Office Actions permitted without submitting a request for continued examination (RCE) and an accompanying fee. To avoid having excess claim fees and additional restrictions applied to an application, examination must be requested before October 3, 2022.
Applicants should consider requesting examination for new or pending applications in advance of October 3, 2022 to avoid claim fees and prosecution restrictions. It may also be prudent to consider requesting early national phase entry and examination of PCT applications prior to October 3, 2022.
Excess Claim Fees
In the past, Canadian patent applicants have enjoyed the flexibility of introducing numerous claims to cover various aspects of their invention at any point during prosecution, without concern for costs associated with excess claim fees. For all patent applications for which examination is requested on or after October 3, 2022, this benefit will be lost and a charge of $100 CAD for each claim in excess of 20 will be brought in. This fee will be assessed and due at the time of requesting examination and reassessed again at the time of paying the Final Fee based on the highest number of claims on file at any one-time during examination. The claim fees will be the same irrespective of claim type or nature of dependency (i.e., multiple dependencies will be permitted within this cost structure).
Office Action Limits and Requests for Continued Examination
The amended Patent Rules will impose a limit on the number of Office Actions that can be issued before requiring a request for continued examination (RCE) with a new examination fee. Three Office Actions can issue before a Notice requiring an RCE is sent. Filing of an RCE and payment of a new examination fee will allow the applicant to receive up to two additional Office Actions. Under this new regime, an applicant can file multiple RCEs and receive up to two additional Office Actions with each request. In 2022, the government fee 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 amended Patent 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.
Withdrawal of Notice of Allowance and Requests for Continued Examination
The ability for an applicant to return a patent application to examination after it has been allowed by requesting withdrawal of a Notice of Allowance is being replaced by the provision to file an RCE. Thus, after a patent application has been allowed, it will be necessary to file an RCE and pay the new examination fee in order to make further amendments and continue examination.
Conditional Notice of Allowance
The concept of a “conditional” allowance is newly introduced in the amended Patent 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. Applicants must respond to a CNOA within four months by either correcting the defects and paying the final fee, or by filing an RCE.
Extension of Time by Right for Excessive Delays
If an Office Action is received from the Canadian Intellectual Property Office (CIPO) more than one month after the day it was sent, the Applicant may request an extension of time to a total of six months to respond to the Office Action within 14 days of receipt.
Obvious errors in translations may be corrected voluntarily, or upon receipt of a notice from CIPO, prior to allowance. However, voluntary corrections must be made within a reasonable time after the applicant became aware of the error and must also include a justification that the error occurred in spite of due care.
Applicants wishing to avoid excess fees and prosecution limits introduced by the amended Patent Rules should contact us to discuss submitting examination requests as soon as possible. To ensure that a submission is received by CIPO’s last business day before the amended Patent Rules are effective, examination must be requested in advance of September 29, 2022.
The information herein is only provided for general information, and does not include many additional changes being made to the Patent Rules. It is best to contact us directly if you wish to discuss options in respect of any particular matters.