Changes to Canadian Patent Practice

Changes Canadian Patent Practice 2022

Changes to Canadian Patent Practice

There are several changes to the Patent Rules that will take effect on October 3, 2022. In some cases it is beneficial to file your patent application in Canada and/or request examination prior to these changes taking effect.

Excess Claim Fees

For applications where examination is requested on or after October 3, 2022, excess claim fees will apply for claims in excess of 20. Excess claim fees are $100 for each claim after 20 (or $50 per claim for small entities)

The assessment for the number of claims and payment of excess claim fees is made on the day examination is requested as well as the day the final fee is paid. As well, CIPO will include in the assessment the number of claims included in the application at any time between requesting examination and paying the final fee.

As an example, below shows the number of claims for an application during various stages of prosecution.

  • requesting examination: 21 claims
  • voluntary amendment: 25 claims (e.g. added 4 claims)
  • response to examiner report: 18 claims (e.g. removed 7 claims)
  • paying final fee: 18 claims

In the example above, there would be 1 excess claim when requesting examination and the excess claim fees would be $100 for large entity ($50 for small entity). At the time of paying the final fee, there would excess claim fees of $400 for large entity ($200 for small entity). Even though when paying the final fee the total claims are less than 20, CIPO will consider the highest total claims during the prosecution. So in this example, CIPO would consider that there are 5 excess claims (e.g. highest number of pending claims during prosecution). Since 1 excess claim fee was paid at the time of requesting examination, the excess claim fees at the stage of paying the final fee would be for 4 claims.

Limits on number of Examiner Reports, Requesting Continued Examination (RCE)

After October 3, 2022, CIPO will limit the number of Examiner's Reports to three.

As well, after the issuance of a third Examiner Report, if the Applicant wants to continue examination they will be required to request continued examination and pay a RCE fee ($816 for large entities, $408 for small entities).

Where RCE is requested, CIPO will limit the number of Examiner's Reports after the RCE to two. If the Applicant wants to continue examination after receiving 2 Examiner Reports, they will need to request continued examination again and pay a further RCE fee.

Continuing Examination after Notice of Allowance

Currently, Applicants can request for the withdrawal of a Notice of
Allowance (and pay a fee) to have the application returned to examination. After October 3, 2022, the only option to continue examination after receiving a Notice of Allowance will be to request continued examination (RCE) and paying the RCE fee.

Next steps: Request Examination before October 3, 2022

In view of the upcoming changes to the patent rules, it is recommended to request examination for your Canadian patent application prior to October 3, 2022. Similarly, you may also consider filing any new Canadian patent applications or entering National Phase (with examination requested) prior to the changes taking effect. Contact Sander Law to get started.

The above content is for informational purposes only and is not legal or professional advice.