*This update was written prior to Canada’s new patent rules being amended to introduce fees for excess claims and for requests for continued examination. If you are reading this article after October 3, 2022, we encourage you to review our subsequent updates on these developments:
- Canada’s new patent claim fee rules: Alternative embodiments within a single claim
- Safe and cost-effective divisional application filing strategies under Canada’s newest patent rules
Rules amending the Patent Rules1 were registered on June 2, 2022 and will largely come into force on October 3, 2022. The rules introduce claim fees and a continued examination scheme to Canadian patent practice and are similar to draft rules published for public comment in 2021 and discussed in our previous article.
The rules aim to reduce patent application pendency and streamline the examination process in view of the Canada-United States-Mexico Agreement (CUSMA), which replaced the North American Free Trade Agreement (NAFTA). Commencing January 1, 2025, CUSMA requires Canada to grant patent term adjustment for Patent Office delay for all applications filed on or after December 1, 2020.
This update outlines why patent applicants should consider requesting examination of Canadian patent applications before October 3, 2022 in order to avoid application of the claim fee and continued examination rules.
Excess Claim Fees
The rules introduce a fee of CAD $1002 for each claim in excess of 20. Claim fees are first calculated and payable when examination is requested. They are calculated again when the final fee (i.e. issue fee) is paid.
In a significant departure from the draft version of the rules, the excess claim fee calculation is based on the greatest number of claims pending in the application at any time starting from the date examination is requested and ending on the date the final fee is paid.
An example of the excess claim fee calculation is provided below:
Thus, in the above example, a total of $1500 in excess claim fees must be paid, because the greatest number of claims pending at any time between the date examination was requested and the date the final fee was paid was 35 (i.e. 15 claims in excess of 20).
Claim fees can be avoided by filing an amendment to reduce the number of claims at any time prior to or together with the request for examination. The deadline for requesting examination is four years from the Canadian (PCT) filing date if the filing date is on or after October 30, 2019, and five years from the Canadian (PCT) filing date if the filing date is before October 30, 2019.
Alternatives within a claim do not count toward the claim fee calculation. For example, a claim directed to “A compound selected from the group consisting of A, B, C, D, and E” counts as one claim, not five. Similarly, multiple claim dependencies are permitted and do not count toward the claim fee calculation. For example, a dependent claim that reads “6. The compound according to any one of claims 1 to 5,” counts as a single claim. Moreover, multiple dependent claims may depend on other multiple dependent claims.
Excess claim fees are not payable in any application in which examination is requested before October 3, 2022. Applicants therefore should consider requesting examination now to avoid the prospect of paying excess claim fees.
Requests for Continued Examination
The new continued examination scheme requires a request for continued examination (RCE) and payment of a CAD $8163 fee to continue examination and respond to the third Examiner’s Report and every second Examiner’s Report thereafter.
The new RCE rules do not apply to applications in which examination is requested before October 3, 2022. As above, patent applicants may therefore benefit by requesting examination now to avoid the RCE requirements.
The amended rules require compliance with the new WIPO sequence listing standard ST.26 for Canadian patent applications having a filing date on or after July 1, 2022.
Transitional provisions permit patent applications having a filing date before July 1, 2022 to contain a sequence listing in either the new WIPO sequence listing standard ST.26 or the previous ST.25 format.
Because the Canadian filing date of a PCT application entering the Canadian national phase is the PCT international filing date, the new sequence listing rules will have an immediate impact only on non-PCT applications.
We will be providing a detailed analysis of the new rules in a future article. In the meantime, if you have questions or require further information, please contact a member of the Patents group at Smart & Biggar.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
2. The CAD $100 excess claim fee is reduced by 50% to CAD $50 for small entities. In brief, a small entity is an entity having no more than 50 employees or that is a university, and that has not transferred or licensed any right or interest in a claimed invention to another entity that is not a small entity and has no obligation (other than a contingent obligation) to do so.
3. The CAD $816 continued examination fee is reduced 50% to CAD $408 for small entities.