On July 3, 2021, the Canadian government published proposed amendments to the Canadian Patent Rules in Part 1 of the Canada Gazette. The proposals are part of a broader effort to meet Canada’s patent term adjustment obligations under the Canada-United States-Mexico Agreement.

The following proposals are intended to streamline the patent examination process:

  • Request for Continued Examination (RCE): There are currently no limitations on the number of examination reports that can be issued during the prosecution of an application. Under the proposed Rules, examination would cease after three examination reports are issued or after a notice of allowance is issued, whichever comes first. Applicants may elect to continue examination by filing an RCE and paying a prescribed fee. The proposed standard fee for an RCE is $816. The fee would be reduced by 50% for small entities.

Applicants seeking to avoid filing an RCE should make sure to respond to all issues raised in examination reports. Applicants may also pre-emptively address potential issues in their application by filing a voluntarily amendment at any time during the prosecution process. 

  • Excess Claim Fees: Currently, the standard fee for requesting examination of a patent application is $816. Meanwhile, the standard final fee is $306. 

The proposed Rules would substantially increase the fee for requesting examination and the final fee. Each excess claim over 20 claims would increase the aforementioned fees by $100. The fee increase would be reduced by 50% for small entities. 

  • Conditional Notice of Allowance (CNOA): If the Commissioner of Patents considers a patent application to be allowable but for a minor defect, they may issue a CNOA. The application would proceed to grant if the Applicant addresses the defect and pays a final fee in response to the CNOA. The CNOA may be beneficial to applicants that are at a later stage of the patent prosecution process, as it would allow them to address minor defects without having to file an RCE. 

The proposed Rules also seek to reduce the impact of unreasonable prosecution delays on the effective term of patents. At a minimum, unreasonable delays would include the granting of a patent more than five years after filing, or more than three years after requesting examination. 

The proposed Rules suggest a number of other amendments including new sequence listing requirements that conform to WIPO’s Patent Cooperation Treaty (PCT) sequence listing standards. The proposed amendments will remain in Part 1 of the Canada Gazette for a consultation period of 30 days after the publication date. Canada will have until January 1, 2022 to bring their amended Rules in force in order to meet its international obligations under the PCT.