Feb 16 2022

Proposed changes to Canadian patent rules were published for public comment in July 2021. Although the final version of the new rules has yet to be confirmed,  these new rules will undoubtedly have significant cost consequences for patent applicants when planning their prosecution strategy in Canada. The final new rules are expected to be announced soon and to come into effect by July 2022.

The proposed new rules include:

• Excess claims fees of $100 CAD per claim over 20 will be introduced. The excess claim fees will be payable calculated at the time of requesting examination and again at the time the issue fee is paid.
• Requests for Continued Examination (RCE) and an RCE fee of $816 CAD 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 proposed new rules will not affect applications for which examination has already been requested or applications for which examination is requested within 30 days of the coming into force of the proposed new rules. 

Recommendations

Based on the proposed new 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.

(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 is contemplated should consider requesting Canadian national phase entry with a request for examination.

We should note that it is possible that the final new rules may be delayed or revised.  Even if the new rules come into force before examination is requested, an applicant will still have the opportunity to avoid the payment of claim fees by amending the application to reduce the number of claims to 20 before or at the time of requesting examination. 

We will provide an update upon publication of the final rules.

If you have questions or require further information in the interim, please contact a member of our team at Ridout & Maybee (https://www.ridoutmaybee.com/ip-professionals) or email Ridout & Maybee LLP at ridbee@ridoutmaybeee.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.

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