Wednesday, October 12 2022   \  Published by The Patent Lawyer .

Patent applicants dash to avoid costly new Canadian rules

This article will look at a couple of key aspects of the newest Canadian Patent Rules that have caught the attention of patent filers. Many applicants are currently taking immediate action to avoid the new rules and get grandfathered under the current rules. As explained below, action is required before October 3, 2022 to avoid the new rules.

The New Rules

Canada has again looked abroad for inspiration for its latest new rules. As of October 3, there will be, for the first time, excess claim fees, and a cap on the number of Office Actions prior to incurring fees to continue the examination process. The new Rules are said to be intended to improve examination efficiency.

Excess Claim Fees

Under the current rules there are no excess claim fees under any circumstances. There will soon be excess claim fees of CAD$100/claim for each claim in excess of 20. The fees will be due when requesting examination. The request for examination is due no later than four years from the Canadian filing date (PCT international application filing date). Claim fees will be initially assessed based on the number of pending claims at the time of requesting examination. Additional claim fees will be owed at the time of paying the patent grant fee if the total number of claims increased during prosecution. 

After three Office Actions, a request for continued examination (RCE) will have to be filed and an additional fee paid. This fee will be the same as the usual request for examination fee. If prosecution continues to an additional two Office Actions, an additional RCE fee will have to be paid to proceed further.

The RCE will also become the new mechanism to reopen and continue prosecution after a notice of allowance of claims has been issued. Typically, prosecution is only reopened where the applicant wishes to add additional claims to a patent application. Due to Canada’s strict rules against double patenting, all claims should typically be pursued in a single patent application where possible, which is why applicants sometimes want to go back and add more claims after allowance.

There are other revisions to the rules being implemented, which are less drastic, and will not be discussed here. Read more

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