NEW PATENT RULES IN CANADA: AVOID EXTRA PROSECUTION COSTS AND BURDEN

The importance of requesting examination before October 3, 2022.

As previously reported, amendments to the Patent Rules coming into force on October 3, 2022, will bring significant changes to Canadian patent practice. The new Rules introduce excess claim fees for each claim in excess of 20, as well as a new procedure and fees for filing a Request for Continued Examination (RCE) after the first three Examination reports and after every two subsequent Examination reports.

It is still possible, however, to avoid both of excess claim fees and RCEs for existing cases, as these new provisions will not apply to Canadian patent applications for which examination has been requested before the coming-into-force date of October 3, 2022.

While each case is unique and should be assessed accordingly, this article outlines certain situations in which acting prior to the coming-into-force date in order to benefit from the current rules should be strongly considered.

Patent applications with a large claim set. There are various reasons why Applicants may wish to file applications including a large number of claims. In some situations, large claim sets are inherent to the technology field of the application, for example, in the case of chemical and pharmaceutical inventions. In other situations, large claim sets may be needed in order to include numerous claims of varying scope and format, for example, to target different potential infringers, strengthen enforceability, and make invalidation more difficult. Under the new Rules, a standard fee of $100 CAD will apply to each claim in excess of 20. The current rules allow any number of claims with no additional costs.

Patent applications disclosing multiple inventions. In Canada, voluntary divisional applications are generally not recommended due to potential invalidity concerns on the grounds of double patenting. Rather, divisional applications should be filed in response to a unity objection identifying multiple invention groups, thereby immunizing the resulting patents against double patenting. Applicants seeking to cover multiple inventions disclosed in the same application are advised to submit all claims of interest simultaneously for consideration by the Examiner, who will then either (i) consider all claims together within a single patent application if they are directed to a same inventive concept or (ii) raise a unity objection allowing the safe filing of divisional applications. Implementing such a claim consolidation strategy could represent a significant cost increase under the new Rules. Indeed, the excess claim fees will be applied to the claims submitted for the evaluation of unity of invention regardless of the number of claims ultimately retained in the parent application. In addition, the examination report raising the lack of unity objection will bring the Applicant one step closer to the potential filing of an RCE.

Potentially arduous prosecution. Under the new Rules, each RCE requires an accompanying fee of $816 CAD, whereas the current rules allow prosecution to continue over a large number of examination reports without the need to pay extra official fees. The continued examination practice introduced by the new Rules is therefore likely to add significant burden and costs to applications expected to face a lengthy or challenging examination process. Arduous prosecution can result from various factors: (i) crowded patent landscapes with potentially relevant prior art; (ii) patent families already facing prosecution difficulties in other jurisdictions; and (iii) patentable subject matter issues, notably for biotech and computer-implemented inventions, as subject matter eligibility is an ongoing and evolving question in Canada.

Cases currently pending in Canada for which the Request for Examination has not yet been filed should be reviewed for these considerations and other indicators of adverse impacts of the new Rules. In addition, new patent applications can still be filed in Canada along with a Request for Examination before October 3, 2022, in order to avoid excess claim fees and RCE provisions of the new Rules. Such new applications may, for example, include early national phase entries and direct filings with or without a priority claim. Furthermore, for pending applications in which one invention group has already been elected for further prosecution in response to a unity of invention objection, Applicants would be advised to consider filing and requesting examination of divisional applications directed to non-elected invention groups that they wish to pursue, rather than waiting until closer to the grant of the parent application, in order to ensure that such divisional filings also benefit from the current rules.

ROBIC has a deep bench of experienced patent prosecutors who can provide insight on potential strategies to maximize value for Canadian patent applications. Contact us at brevpat@robic.com for assistance in navigating the changes brought by the new Patent Rules to your portfolio.