NEW PATENT RULES WILL BRING SIGNIFICANT CHANGES TO CANADIAN PATENT PRACTICE

New Patent Rules will bring significant changes to Canadian patent practice

Almost one year after the publication of its proposed changes to the Canadian Patent Rules on July 3, 2021, CIPO has now released the final version of the Rules Amending the Patent Rules set to come into force on October 3, 2022.

The newly published version of the Rules maintains the major features of the previous version, including the introduction of excess claims fees as well as new procedures and fees for filing a Request for Continued Examination (RCE).

The new Rules introduce a standard fee of $100 CAD (or $50 CAD for a small entity) for each claim in excess of 20 that is included in the application, evaluated at two instances: at the time of requesting examination and when paying the final fee. Multiple dependent claims remain available in Canada, and such claims and those that otherwise introduce subject matter in the alternative, each count as a single claim for the purpose of calculating the excess claim fees.  Notably, the Rules make no mention of a maximum number of independent claims within the submitted claim set.  Additional claims introduced during examination and raising the total claim count above 20 will also require the payment of the associated fees when paying the final fee to issue the patent, regardless of the ultimate size of the allowed claim set.

The RCE provision of the new Rules is based on the number of examination reports issued in a given case.  In a first examination stage, after three examination reports have been received an RCE must be filed and an accompanying fee of $816 CAD (or $408 CAD for a small entity) must be paid in order for examination to continue. After a first RCE has been filed, examination will continue but every two examination reports will require a further RCE.

For applications that have large claim counts and those that undergo arduous prosecution, these new provisions of the Rules could represent a significant cost increase. As the new Rules will not apply to patent applications for which the request for examination has been filed prior to the coming-into-force date, the clock is ticking to ensure that pending applications negatively affected by the excess claim fees or RCE provisions are grandfathered into the old Rules.

Here are three practical items Applicants should consider prior to October 3, 2022:

1. Request examination early for pending Canadian cases. The deadline to file a request for examination in Canada is either four or five years from the Canadian filing date or the PCT filing date for national phase entries. There may therefore be one or several dormant cases in an Applicant’s portfolio for which the request for examination has not yet been filed and may have an associated deadline years down the road. It would be prudent to evaluate the potential cost implications of the new Rules in these cases, and consider requesting examination before October 3, 2022.
2. File in Canada early. If Canada is on the radar for national phase entries or direct filings in 2022 or 2023, it may be advantageous to file early, before October 3, 2022, and concurrently request examination to ensure that the Canadian application benefits from the old Rules. The deadline to enter national phase in Canada is 30 months from the earliest priority date of the PCT application, but an early filing can be done at any time before this deadline.
3. Consult Canadian IP firm for updates and strategies. ROBIC  has a deep bench of experienced patent prosecutors who can provide insight on potential strategies to maximize value for Canadian patent applications. The changes to the Patent Rules should be navigated with care especially in light of unique features of Canadian patent law, such as the law surrounding double patenting and divisional practice.