Considerations for Applicants Before the Canadian Patent Rules Change

Considerations for Applicants Before the Canadian Patent Rules Change

Photograph of the Peace Tower at the Canadian parliament buildings taken from the ground so that the clock peeks out from behind another building.

With changes to the Patent Rules expected to come into force in 2022, how should patent applicants prepare? As previously reported by PCK, the proposed changes will increase the cost of obtaining patent protection in Canada by imposing excess claim fees and limits on office actions. Applicants may wish to request examination for their Canadian patent applications soon in order to take advantage of the current fee system.

How Will the Patent Rules Change?

  1. Requests for Continued Examination (RCEs)

Part of the proposed amendments to prosecution practice would put limits on the number of office actions available to a patent applicant. Currently, there is no limit to the number of office actions an applicant is entitled to receive, but under the new system, applicants would receive a maximum of three examination reports or a notice of allowance, whichever comes first. Once these actions are exhausted, examination ends unless an applicant elects to continue by requesting continued examination and paying a prescribed fee.

  1. Excess Claim Fees

In addition, part of the proposed amendments would adjust the existing fee for making a request for examination and the final fee required to grant a patent. Currently, there is no limit to the number of claims in each application, but under the new system, applicants will be charged fees for each claim in excess of 20 claims. The standard fee for each excess claim over 20 is $100 or $50 for small entities. Applications with 20 claims or fewer would not be subject to these new fees and would pay only the current rate for request for examination or the final fee.

  1. Conditional Notice of Allowance

The proposed amendments would further create a new office action called a Conditional Notice of Allowance (“CNOA”). This would be issued at the discretion of the Commissioner and would inform the applicant that the application is in condition for allowance, but certain minor defects in the application must be addressed. The CNOA would require that the applicant address the defects and pay the final fee. Once the requirements of the CNOA are satisfied, the application would proceed to grant.

The Timeline

Before the changes become law, the finalized version of the new Patent Rules will be published in the Canada Gazette Part II. Thirty days after the Privy Council registers the new Patent Rules, the changes will come into force. It is unclear when that will happen, but it’s possible that the coming into force date will be set as July 1, 2022, to coincide with changes to the sequence listing format.

The Bottom Line

Patent applicants may wish to revisit their patent filing strategies before the new Patent Rules take effect. These changes will not apply to patent applications for which examination has already been requested when the new Patent Rules become law. Therefore, to avoid fees for excess claims and RCEs, patent applicants should request examination for their Canadian patents in early 2022.

Note that this may not be a suitable strategy for every patent application. Applicants should consider the number of claims in their application and whether Canadian prosecution could benefit from the Patent Prosecution Highway. If you are unsure how to respond to the new Patent Rules, please speak to a patent lawyer or patent agent at PCK Intellectual Property.

For a more detailed analysis of the impending changes to the Patent Rules, read our summary: Amendments to Patent Rules Continue.

PCK IP is one of North America’s leading full-service intellectual property firms with offices in Canada and the United States. The firm represents large multinational companies, scaling mid-size companies, and funded innovative start-up entities. PCK IP professionals include seasoned patent and trademark agents, engineers, scientists, biochemists and IP lawyers having experience across a broad range of industries and technologies. Contact us today.

The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.