Canada’s Intellectual Property Firm

New year, new patent rules for excess claim fees and continued examination in Canada

Authored byDavid Schwartz

*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:

Consider requesting examination of your Canadian patent applications now to avoid potential fees

Last summer, the Government of Canada issued draft regulations introducing claim fees and a continued examination scheme for Canadian patent applications. The proposed rules were published for public comment in July 2021 (see Canada Gazette Part I), the first step in patent rulemaking in Canada. The second and final step for the rules to be finalized and published is expected before this summer and will likely be sooner.

This article outlines the proposed amendments to the Patent Rules and provides applicants with guidance on possible actions they can consider taking now, to avoid potential fees under the new rules.  

The proposed 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.

Here is a summary of the proposed new rules:

  • Excess Claim Fees

The proposal is to introduce a fee of CAD $100 for each claim in excess of 20, fees being calculated when examination is requested and when the application is allowed. For instance, if there are 22 claims when examination is requested, excess claim fees of $200 are payable at that time. If there are then 25 claims when the application is allowed, further excess claim fees of $300 are payable with the issue fee.

  • Requests for Continued Examination

The proposed continued examination scheme requires a request for continued examination (RCE) and payment of a CAD $816 fee to continue examination and respond to the third Examiner’s Report, and every second Examiner’s Report thereafter.

Timing and implications for applicants

Should the amendments proceed, the final rules will be published in Canada Gazette Part II, taking into account public comments on the draft rules. While the exact timing is not certain it is reasonable to expect that the final rules will be in force in Canada no later than July 1, 2022, and will likely be sooner (the proposed rule package includes amendments implementing the new WIPO biological sequence listing standard ST.26 which is required to be in place by that date).

Importantly, the draft rules contain a legacy provision such that claim fees and continued examination fees would not apply to any application in which examination is requested within 30 days of registration of the new rules. 

However, because registration may occur up to a week or two before the final rules are published, there may be very little notice of this proposed 30-day window of opportunity.

Weighing the odds: requesting examination now vs later under the new rules

Based on the current information, applicants may wish to consider requesting examination now, to avoid potential excess claim fees and continued examination fees. 

Requesting examination now may provide some certainty. A possible downside is that, if the proposed rules are delayed, not enacted, or not enacted in their current form, the applicant would have incurred the costs of requesting examination before it was necessary and reduced the likelihood that the results of foreign prosecution will be available to streamline prosecution in Canada once substantive examination commences. In the ordinary course, the examination request is due four years from the Canadian (PCT) filing date if the filing date is on or after October 30, 2019, and five years from the filing date if it is before October 30, 2019. 

Finally, even if the proposed rules come into force in their present form before examination is requested, an applicant would have the opportunity to avoid the payment of claim fees by amending the application to reduce the number of claims to 20 before or at the time of requesting examination. 

We will be providing a detailed update upon publication of the final rules. 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.