New Patent Rules in Canada: Changes in post-allowance practice

As previously reported, significant changes to Canada’s Patent Rules will come into effect on October 3, 2022. The new Rules will introduce excess claim fees along with a Request for Continued Examination (RCE) procedure (and fees) based on the number of Examination Reports issued following the Request for Examination. However, these two main provisions will not apply to patent applications for which examination has been requested before October 3, except for the RCE procedure in limited circumstances detailed below. The remaining provisions introduced by the new Rules will affect all pending applications after October 3, regardless of when examination was requested. One such change is the way an application can be returned to examination after a Notice of Allowance has been issued.

Under the current Rules, setting aside a Notice of Allowance involves requesting that the Notice be withdrawn and paying a $407.18 CAD fee. Starting on October 3, such a request can no longer be made. Instead, an RCE will need to be filed, along with the payment of an $816 CAD fee. In addition to the increase in fees, the filing of the RCE will make the application subject to the new RCE procedure going forward, even if the Request for Examination was filed before October 3. An RCE, and an $816 CAD fee, will therefore be required after every two subsequent Examination Reports issued following withdrawal from allowance.

The most common reason for setting a Notice of Allowance aside is to add new claims to an application after the Notice of Allowance was issued. Because of Canada’s approach to double patenting, divisional applications should be filed in response to a lack of unity objection raised by the Examiner. If an Applicant decides to pursue additional claims after receiving a Notice of Allowance, it is often recommended to request withdrawal of the Notice and voluntarily add the new claims for consideration by the Examiner.

In other cases, an Applicant may want to request the withdrawal of a Notice of Allowance to make other changes or corrections to the application, as certain corrections are performed more easily and with less risk before the application is allowed. For example, in order to make changes to the list of inventors after a Notice of Allowance has been issued, it may be more convenient and/or cost effective to request the withdrawal of the Notice and make the changes, rather than making the changes to the issued patent.

If you have recently received a Notice of Allowance with respect to a Canadian patent application that you wish to set aside, or receive one in the upcoming weeks, there may be significant advantages to requesting that the Notice be withdrawn before the coming-into-force date of October 3, 2022. Our team of experienced patent prosecutors will be able to assist you.