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Changes to the Canadian Patent Rules coming into force on October 3, 2022: Steps to reduce costs and enhance rights

Jun 13 2022

Changes to the Canadian Patent Rules will be coming into force on October 3, 2022, with sections pertaining to sequence listings coming into force earlier on July 1, 2022. These Rules are expected to have significant cost consequences for patent applicants when planning their prosecution strategy in Canada.

The changes to the Rules include:

  • Excess claims fees of $100 CAD[1] per claim over 20 will be introduced. The excess claim fees will be payable at the time of requesting examination and again at the time the issue fee is paid (for any excess claims not already covered by a prior payment at the time of requesting examination). The number of excess claims is determined based on the claims included in the application at any time between the request for examination and payment of the issue fee.
  • Requests for Continued Examination (RCE) and an RCE fee of $816 CAD[2] will be required to continue examination and respond to the third Examiner’s Report and every second Examiner’s Report thereafter. This would include Examiner’s Reports in which the only objection was a lack of unity objection.

The above two changes to the Rules will not affect applications for which examination has already been requested or applications for which examination is requested prior to October 3, 2022. 

Recommendations

In view of the upcoming changes to the Rules, we recommend:

(i)       Applicants send instructions now to request examination to avoid potential excess claim fees and continued examination fees.  

(ii)      Applicants should consider filing any contemplated divisional applications from pending applications with a request for examination prior to October 3, 2022. 

(iii)     Applicants who are considering adding claims for purposes of triggering unity of invention objections to avoid double patenting issues in Canada should file a voluntary amendment now.

(iv)     PCT applicants for which Canadian national phase entry is contemplated should consider requesting Canadian national phase entry now with a request for examination.

If examination is requested after the coming into force date, an applicant will still have the opportunity to avoid the payment of excess claim fees by amending the application to reduce the number of claims to 20 before or at the time of requesting examination. A claim that recites elements in the alternative or includes a multiple dependency is counted as a single claim. 

Other Changes

  • The changes to the Rules also introduce a Conditional Notice of Allowance that would inform the applicant that the application is in condition for allowance but identify minor defects that must be addressed along with payment of the issue fee. The Conditional Notice of Allowance would close examination so that the applicant would be required to request that the Notice of Allowance be withdrawn to make any substantive amendments to the application. Following the applicant's response to a Conditional Notice of Allowance, if the Examiner does not consider the application to be allowable, the Conditional Notice of Allowance will be withdrawn, payment of the final fee will be refunded and examination will continue, subject to RCE requirements and the number of Examination Reports received.
  • The changes to the Rules also impose a duty to ensure that translations of a PCT national phase application in a language other than English or French that are submitted at the time of Canadian national phase application entry were prepared with due care. If a correction to the translation is required, a statement must be submitted to the effect that “(i) at the time the original translation was submit­ted, it would have been obvious to a skilled transla­tor fluent in both the original language and the lan­guage of translation that the original translation contained an error and that the corrected transla­tion is an accurate translation, (ii) the error in the original translation occurred despite due care having been taken in its prepara­tion, and (iii) the request is being made within a reasonable time after the applicant became aware of the error. As a result of this change, it is important that proper translations are prepared and submitted at the time of Canadian national phase application entry and that machine-translations or other low quality translations be avoided.
  • The changes to the Rules also require compliance with new WIPO sequence listing standard ST.26 for Canadian patent applications having a filing date on or after July 1, 2022. Transitional provisions permit patent applications having a filing date before July 1, 2022 to contain a sequence listing in either the new WIPO sequence listing standard ST.26 or the previous ST.25 format. The new sequence listing rules will have immediate impact only for non-PCT applications because the Canadian filing date of a PCT application entering the Canadian national phase is the PCT international filing date.

If you have questions or require further information, please contact a member of our team at Ridout & Maybee or email Ridout & Maybee LLP at ridbee@ridoutmaybee.com.

Have you visited the Patent Resources section of our website?

In order to help you navigate the upcoming changes to the Canadian patent regime, we invite you to visit our website, which contains a list of valuable resources and downloads, including:

  • On-demand webinar recording
  • PDF downloads
  • Article updates

NOT LEGAL ADVICE. Information presented herein on this website is for information purposes only. It is not legal advice. You should not rely upon this information to take any action.  Ridout & Maybee professionals will be pleased to discuss your specific issues with you.



[1] $50 CAD if the applicant is a small entity

[2] $408 CAD if the applicant is a small entity

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Tags: Changes to Patent Rules