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Amendments to the Canadian Patent Rules to introduce Excess Claims Fees and Requests for Continued Prosecution (RCEs).

Patent Rule amendments were published July 3, 2021 in the Canada Gazette 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). (For more information and a detailed list of the changes please see the Canada Gazette, Part 1, Vol. 155, NO. 27: Rules Amending the Patent Rules.)

A Part II publication of the Patent Rule amendments in the Canadian Gazette is expected in about 6 months bringing the rules into effect 30 days after the Part II publication.   The Part II publication of these rules may result in amended rules that may differ from those published in Part I.

Significant proposed rule amendments published in Part I are:

  1. Introduction of Excess claims fees of $100 for each claim in excess of 20 payable at the time of requesting examination (and payable at allowance for extra claims that are added during prosecution above those excess claims paid for when requesting examination).
  2. Introduction of RCE practice where an RCE fee of $816 CA becomes due after the 3rd Office Action (OA) and thereafter after every subsequent 2nd  OA.
  3. Transitional provisions that 1) and 2) above do not apply for patent applications where a request for examination and the examination fee are paid within 30 days of the new rules being registered (publication as Part II in the Canadian Gazette).
  4. 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.
  5. 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.

At this time the proposed rules do not provide for terminal disclaimer practice in Canada which would address double patenting issues in Canada.  It also appears that an OA directed to only a unity of invention objection counts as one OA.

In view of these proposed rule changes, you may wish to implement strategies when requesting examination to reduce excess claims fees.

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).

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 so as to have the Examiner raise a unity objection and circumvent a double patenting issue. (Quite often where it is believed a unity objection should be raised, the Examiner does not raise such and objection permitting all the claims to be granted in one patent). The timing of adding these types of claims after examination has been requested may be a consideration that controls the excess claims fees incurred.   Also, you may wish to limit the number of dependent claims added to reduce costs.

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