We previously outlined certain changes to the Patent Rules that will be coming into force on October 3, 2022, with sections pertaining to sequence listings having already come into force on July 1, 2022, along with our recommendations in view of the changes.
This article further highlights how key changes to the Patent Rules are likely to impact patent prosecution in Canada, and steps that can mitigate these impacts.
Excess Claims Fees
Excess claims fees are payable at two milestones during prosecution. Importantly, underpayment of excess claims fees can result in unknowingly missing either milestone and possible abandonment of the application.
At Request for Examination
If a request for examination is made on or after October 3, 2022, excess claims fee will be payable at the time of requesting examination, for each claim in excess of 20. To reduce the amount of payable excess claims fees, the number of claims can be reduced before or on the same day that examination is requested.
At Final Fee Payment
A second calculation for excess claims fees will be made at the time the final fee is paid, for those applications for which a request for examination is made on or after October 3, 2022. At the time of paying final fee, excess claims fees will be payable for each claim in excess of 20 that is included in the application at any time during the period after the request for examination and up to the final fee payment, and for which an excess claims fee was not already paid at the time of requesting examination.
Importantly, the onus is on the Applicant to ensure that the correct excess claims fee is paid, both at the time of requesting examination and at the time of final fee payment. If the excess claims fee is underpaid, the deadline for requesting examination or deadline for payment of the final fee may be missed. This can result in abandonment of the application.
Accordingly, prior to requesting examination or paying the final fee, the Applicant should review the claims, and, in particular, review the full history of changes to the claims and check for errors in claim numbering, to determine the number of claims, in order to calculate the correct excess claims fee to be paid.
Request for Continued Examination
The changes to the Patent Rules introduce the Request for Continued Examination (RCE) to Canada’s patent prosecution regime, but while they share a common name, do not confuse the Canadian RCE regime with that of the U.S.
RCEs to withdraw allowance
After the changes to the Patent Rules come into force, an Applicant wishing to withdraw an application from allowance (e.g., to further amend the claims) can voluntarily submit an RCE to return the application to prosecution, regardless of the date that examination was requested.
However, if an RCE is filed to withdraw an application from allowance, this will trigger the need to file an RCE along with every second Examiner’s Requisition thereafter. This will apply to all applications on or after October 3, 2022, even if examination was requested before October 3, 2022.
If an application is allowed before October 3, 2022, and the Applicant wishes to withdraw the allowance, then the Applicant should consider requesting withdrawal of the allowance prior to October 3, 2022, as the fee for the present withdrawal procedure is less than the fee for submitting an RCE, and the Applicant avoids triggering subsequent RCEs.
RCEs to continue examination
Unlike prosecution in the U.S., RCEs in Canada will be required in response to a notice from the Examiner to continue examination following the third Examiner’s Requisition, and also every second Examiner’s Requisition thereafter. This applies to all applications on or after October 3, 2022, unless examination is requested before October 3, 2022
We expect that a notice for RCE will be sent along with the Examiner’s Requisition, such that the response to the Examiner’s Requisition and the RCE are both due 4 months from the Examiner’s Requisition. However, while the due date for responding to an Examiner’s Requisition may be extended (although the granting of an extension is discretionary and only in limited circumstances), the due date for filing an RCE is not extendible.
The failure to file an RCE will result in abandonment of the application, even if a response to the Examiner’s Requisition was filed in a timely manner, but the application can be reinstated as of right.
When entering national phase in Canada, a translation of the PCT application is required. To satisfy this requirement, Applicants may rely on a machine translation or low-quality translation. On account of the changes to the Patent Rules, Applicants may wish to reconsider this approach.
After the changes to the Patent Rules come into force, an Applicant may correct a translation of a PCT application. Notably, to request correction of the translation, the Applicant has to submit a statement to the effect that the error in the original translation occurred despite due care having been taken in its preparation. Presently, CIPO’s definition of due care, in the context of the correction of translations, is unclear. Accordingly, a machine translation or low-quality translation may not be considered due care. However, we understand CIPO will accept the statement at face value, but the Patent Rules are silent as to the consequences of a false statement.