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Key changes to patent prosecution in Canada will come into effect October 3, 2022.

Nelligan Law is grateful for the contribution of articling student Nailah Ramsoomair in writing this blog post.

The goal of these amendments is to streamline the examination process in view of the Canada-United States-Mexico Agreement (CUSMA). These changes will impact the patent prosecution process in Canada by introducing excess claims fees, requests for continued examinations and conditional notices of allowance.

Based on the forthcoming changes, patent applicants should consider effecting the followings before October 3, 2022:

  1. If you have a pending PCT International Application(s) or considering to file an application in Canada via Paris Convention, then file an application(s) and request for examination before October 3;
  2. If you have already filed your applications, consider requesting an examination before October 3; and,
  3. If you have any pending application and considering to file a divisional application, consider filing and requesting an examination before October 3.

However, the decision to avoid these fees should be made carefully in consideration of other relevant factors such as advantages of deferring examination costs, PPH, etc.

Excess Claim Fees

Currently there are no excess claim fees in Canada.

However, the new amendments to the Patent Rules introduce the concept of excess claims fees that become payable, at most, twice during prosecution; first, at the time of request for examination, and second at the time of paying issue fee.

For example, if an application has 23 claims pending at the time the examination is requested, then the applicant will need to pay the excess claim fee in the amount of $300 (or 3 x $100*) when they request the examination (for the extra 3 claims over 20 claims at the time the examination is requested). If an additional claims are added to exceed 23 claims (say, 28 claims) during the examination, even if the Applicant cancels 5 claims thereafter but before receiving a Notice of Allowance, the Applicant would still additionally owe $500 (or 5 x $100*) in excess claims fess when paying the final fee, since the total number of claims once exceeded the total number of claims that the Applicant originally paid for at the time of request for examination. It is important to note that dependent claims (either single or multiple) will count as a single claim when determining excess claim fees.

According to the transitional provision, this new rule does not apply to the applications that requests for examination were submitted / paid for before October 3, 2022. Accordingly, based on these coming amendments concerning excess claim fees, applicants should consider requesting examination for existing patent applications as well as filing new and divisional applications with filing of request for examinations before the October 3, 2022 date.

Note: * … The $100 fee is at Standard Rate. This would be reduced by 50% to $50 for small entities (Small Entity Rate). Small entities include companies with no more than 50 employees or that is a university and has not transferred/licensed any right/interest in a claimed invention to another that is not a small entity.

Requests for Continued Examination

Currently there is no limit to the number of non-final office actions that can be issued before receipt of an allowance or a final action; however, once the new rules come into force, the applicants will require a request for continued examination after 2 non-final office actions for the first round of the examination; 1 non-final office action after continued examination is requested. As such, under the new continued examination scheme requires a request for continued examination and payment of $816** (at Standard Rate) to continue the examination and respond to the third Examiner’s Reports (also referred to as “Office Action”). However, it is important to note that these new requests for continued examination rules do not apply to applications in which an examination is requested before October 3, 2022. So, patent applicants can benefit by requesting examinations now to avoid this request for continued examination requirement.

Note: ** … $408 at Small Entity Rate.

Conditional Notice of Allowance

There is currently no conditional notice of allowance in Canada.

The amendments to the Patent Rules introduce a conditional notice that would work to essentially inform patent applicants that the application is in a condition for allowance. It would identify certain minor defects to be addressed along with payment of the final fee. Once the applicant has responded to the conditional notice of allowance, if the examiner does not subsequently find the application allowable, then the conditional notice will be withdrawn, payment of the final fee will be refunded, and the examination will continue. The conditional notices of allowance will work to reduce the dialogue between the examiner and applicant as well as efficiently allow the applicant to address the defects.

For more information, please refer to the following link: Canadian Intellectual Property Office

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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