Proposed legislation adds excess claims fees and “three strike” office actions

Jul 09 2021

Proposed changes to Canadian law were published in early July, which, if passed, will have significant consequences for patent applicants.

These changes include:

  • Excess claims fees of $100 per claim over 20

Calculated at the time of Requesting Examination, and again at payment of Final Fee, these fees are not applicable to any Canadian applications that have requested examination within 30 days of the coming into force of the proposed changes.

  • Three strikes and you’re out

Applicants will need to file a Request for Continued Examination, at a cost of $816, to continue prosecution after a third office action.This includes office actions where the only objection is unity of invention. 

  • Conditional Notice of Allowance

Applications which only require minor claim amendments for allowance will receive a “conditional notice of allowance”, which should streamline prosecution.

These changes are not yet law. They may be amended before they become law. 

We will keep you advised as developments arise and please contact one of our patent professionals if you have any questions at any time.

This article is for information purposes only and does not constitute legal or professional advice.

Back to blog overview

Tags: Charles Boulakia, Elliott Gold, Patents, PCT Application