Upcoming amendments to the Canadian patent system

CANADIAN PATENT LAW
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The Canadian Government has proposed a number of amendments to the patent system, which are intended to be implemented throughout 2022 and will affect the examination of patent applications in this country.

The main amendments included in this proposal are the following:

  • Excess claims fees
  • Request for Continued Examination

Fees for excess claims over 20

Currently, the Canadian Intellectual Property Office (CIPO) does not establish any official excess claims fees. However, under the proposed amendments, the applicant will be required to pay additional fees for each claim over 20 when they request the substantive examination. Additionally, if at the time the patent is granted it has more than 20 claims, the applicant must pay the corresponding excess claims fees that have not already been paid together with the request for a substantive examination.

Let’s look at a couple of examples:

  1. If a patent application has less than 20 claims at the time of requesting the substantive examination, the applicant will not be required to pay any official excess claims fee at that time; however, if when the intention to grant is issued the number of claims is greater than 20, the applicant will be required to pay the excess claims fees together with the granting fee, regardless of whether or not the application did not have more than 20 claims originally.
  2. If a patent application has more than 20 claims at the time of requesting the substantive examination, the applicant must pay official excess claims fees when a substantive examination is requested. In addition, if at the time of paying the granting fee, the number of claims is even greater than the number of claims in the request for a substantive examination, the applicant must pay the difference between the granting claims in excess of 20 and those of the substantive examination.

For example, if an application has 22 claims when a substantive examination is requested, the applicant will have to pay the official fee for 2 claims in excess of 20; if upon grant of the patent the application has 25 claims, the applicant must pay official fees for 3 more claims.

The proposed fee for each claim over 20 is 100 Canadian dollars (CAD) (or 50 CAD in those cases where the applicant meets the requirements for small entities).

Request for Continued Examination

Currently, there is no limit to the number of office actions that CIPO can issue before finalising the examination and making a decision regarding the grant or rejection of the patent application.

In the proposed changes to the Canadian Patent Regulations, the number of office actions is limited to three. In order to continue with the examination of the patent application after three office actions, the applicant must file a Request for Continued Examination (RCE) and pay the corresponding fee. The RCE will allow the applicant to receive two more office actions, after which a new RCE would be required to be able to continue with the examination of the patent application. This system is similar to the one currently applied by the United States Patent and Trademark Office (USPTO) after issuing a final office action.

The proposed fee for the RCE is 816 CAD (or 408 CAD if the applicant is a small entity).

Entry into force

Although the CIPO has not yet established the entry-into-force date of these changes, it is estimated that it could take place on 1 July 2022. Once these changes become effective, they will be applied to all patent applications for which substantive examination is requested thereafter, regardless of their filing date.

Therefore, for all those patent applications pending in Canada for which the applicant wishes to avoid additional excess claims and RCE fees, it is advisable to request the substantive examination as soon as possible and, in any case, before the entry into force of these amendments to the Canadian patent system.

Bearing in mind that it is possible (and advisable) in Canada to draft medical use claims using different formats (such as purpose-limited product claims, Swiss-type claims, or use claims), it is common for the total number of claims in the case of pharmaceutical inventions to be greater than 20. On this basis, we strongly advise that applicants for this type of inventions consider requesting a substantive examination in Canada prior to the entry into force of these amendments in order to benefit from current CIPO practice that does not require additional excess claims fees.

Regina Ibarrola
Patent Paralegal - Formalities
Regina joined ABG in 2010. Her practice focuses on the filing and prosecution of foreign patent applications, utility models, designs and Supplementary Protection Certificates, as well as International and European Community Designs.

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