Amendments to Canada’s Patent Rules were published on June 22, 2022 in Part II of the Canada Gazette. The amended Rules discussed below will come into force on October 3, 2022 (with the exception of the new sequence listing standard that came into force on July 1, 2022). The amendments strive to better streamline the patent examination process and will assist Canada in meeting its patent term adjustment obligations under the Canada-United States-Mexico Agreement.
Excess Claim Fees
Currently, the standard fee for requesting examination of a patent application is $814.37 and the standard final fee is $305.39. The amended Rules will substantially increase these fees to encourage Applicants to file compact applications.
The standard fee for requesting examination will increase by $100.00 for each claim in excess of 20, and the number of excess claims is determined on the day the request for examination is made. The standard final fee will also increase by $100.00 for each claim in excess of 20. However, for the final fee, the number of excess claims is determined by considering the number of claims included in the application at any time between the request for examination and the final fee payment. Excess claim fees will be reduced by 50% for small entities.
Importantly, the excess claim fees discussed above will not apply if a request for examination is made before October 3, 2022. In this regard, we strongly suggest that Applicants request examination of their applications before the coming into force date. If an Applicant chooses to request examination on or after October 3, 2022, we suggest that they be mindful of excess claims that are present during examination of the application, as these excess claims will be counted towards the final fee.
Request for Continued Examination
There are currently no limitations on the number of examination reports that can be issued during the prosecution of an application. Under the amended Rules, if an Applicant has received three examination reports, the Applicant can only continue examination by filing a request for continued examination and paying a fee of $816.00. If two examination reports are issued after a first request for continued examination is made, the Applicant will need to file yet another request for continued examination for examination to continue. The fee for requesting continued examination will be reduced by 50% for small entities.
As with the excess claim fees, the request for continued examination requirement will not apply if examination is requested prior to October 3, 2022. We therefore suggest requesting examination prior to October 3, 2022 to avoid the continued examination fee. Otherwise, Applicants should take care in responding to all issues raised during examination reports. Applicants may also consider pre-emptively addressing potential issues in their application by filing a voluntary amendment.
Conditional Notice of Allowance
An Examiner will issue a Conditional Notice of Allowance if an application is allowable but for the presence of minor defects. The Applicant will then have 4 months to submit a final fee and file amendments and/or arguments to address the minor defects.
The Conditional Notice of Allowance will be beneficial to Applicants that would like to address minor defects in their application without having to file a request for continued examination.
The amended Rules will also contain other minor changes such as the requirement for sequence listings to meet Standard ST.26 of the World Intellectual Property Organization. The sequence listing requirement will only apply to applications filed on or after July 1, 2022.
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