Amendments to the Canadian Patent Rules to Introduce Excess Claims Fees and Requests for Continued Prosecution (RCEs) Coming into Force October 3, 2022Tanner Hukezalie
Amendments to the Canadian Patent Rules were registered on June 2, 2022. Amendments relating to sequence listings come into force on July 1, 2022 while all other rule changes come into force on October 3, 2022. These Rule Amendments have been published in the Canadian Gazette, Part II, Volume 156, Number 13 on June 22, 2022. The Rule Amendments are to streamline the patent examination process allowing Canada to implement the patent term adjustment obligation set out in the Canada-United States-Mexico Agreement (CUSMA). The Rule Amendments introduce excess claims fees and requests for continued examination (RCE) for Canadian patent practice.
Significant Rule Amendments that come into effect on October 3, 2022 are:
- Introduction of Excess claims fees of $100 for each claim in excess of 20 payable at the time of requesting examination, and also payable at allowance for extra claims that are added during prosecution above those excess claims paid for when requesting examination. The excess claims fees are in addition to the basic examination fee due or the allowance fee due.
- Introduction of RCE practice where an RCE fee (same amount as the examination fee) becomes due after the 3rd Office Action (OA) and thereafter after every subsequent 2nd OA.
- Introduction of a conditional notice of allowance (CNOA) permitting the Examiner to allow a patent application subject to minor defects noted by the Examiner in the CNOA. The defects noted in the CNOA are to be addressed either prior to or at the same time as paying the allowance fee.
- Prosecution of a patent application comes to end after the 3rd or 2nd office action noted in 2) above, after a CNOA or after a Notice of Allowance. To re-open prosecution, an RCE must be requested together with the RCE fee within a 4 month window.
- Multiple dependent claims and claims reciting features in the alternative each count as 1 claim.
The transitional provisions are that 1) and 2) above for excess claim fees and RCEs during prosecution up to allowance do not apply for patent applications presently where a request for examination has been made and the examination fee has been paid before October 3, 2022. However, irregardless of when Examination has been requested, filing an RCE request after allowance will start an RCE count for the application.
What is not covered in the Amended Rules:
There is no provision for terminal disclaimer practice in Canada which would address double patenting issues in Canada. So, filing a voluntary divisional application to divisional and/or continuation type claims not considered by the Canadian Examiner in the parent file may be open to a double or an obvious-double patenting challenge by the Examiner and before the Courts.
It appears that an OA directed to only a unity of invention objection may not count as one OA. This still needs to be determined.
Strategies to Streamline Prosecution in view of the Rule Changes
In view of these proposed rule changes, you may wish to implement strategies when requesting examination to reduce excess claims fees.
First, if you have more than 20 claims for examination or foresee adding claims over 20, you should consider requesting examination before October 3, 2022.
After October 3, 2022, when requesting examination you may wish to file a preliminary amendment based on foreign prosecution that circumvents the Examiner from issuing a first OA incorporating a prior art objection from a foreign counterpart file history such as the IPRP, an EP office action or US office action(s). The amendment would bring the CA claims into agreement with the granted claims in the EPO or US, or bring the claims into agreement with the latest set of claims on file in the EPO or US.
When placing new divisional and/or continuation claims on file, limit the claims for the examiner to consider to independent and key dependent claims. If you are considering protection for continuation and/or divisional type claims, it is still recommended practice to place these claims on the Canadian parent application for the Examiner to consider unity of invention. In practice the Examiner does not always raise an expected unity objection, or if the Examiner does, it can be along different claims groupings as found in other jurisdictions. Filing divisional applications to inventive claim groupings identified by the Examiner are usually not open to a double patenting or an obvious-double patenting objection by the Examiner or before the courts.
At examination, you may wish to limit the number of dependent claims or using multiple dependent claims to limit the number of claims to 20.
(For more information and a detailed list of the changes please see the Canada Gazette, Part II, Vol. 156, NO. 13: Rules Amending the Patent Rules: SOR/2022-120.)