Amendments to the Canadian Patent Rules introducing excess claim fees will come into force soon and will apply to any application in which examination has not been requested before 3 October 2022 (for further details, see "New rules: request examination of Canadian patent applications before 3 October 2022"). The rules introduce a fee of C$100 for each claim over 20.(1) Claim fees are first calculated and payable when the examination is requested. They are calculated again when the final fee (ie, the issue fee) is paid. 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.
This article is part of a series of articles discussing options and best practices for minimising claim fees under the new rules. There are three possible approaches for minimising the number of claims and associated excess claim fees:
- cancelling claims;
- making use of multiply-dependent claims; and
- consolidating the subject matter of separate claims as alternatives within a single claim.
This article focuses on cancelling claims.
Given that the US Patent and Trademark Office and the European Patent Office permit a maximum of 20 and 15 claims, respectively, before excess claim fees are payable, applicants may be amenable to prosecuting no more than 20 claims in their Canadian patent applications. Provided the claim set is reduced to 20 claims prior to or together with the examination request, no claim fees will be payable.
It is important to note that the total claims fees payable will be based on the greatest number of claims pending at any time from when the examination is requested until the final fee (ie, the issue fee) is paid, although the fees are only payable with the examination fee or final fee. Therefore, care must be taken not to unintentionally file a larger claim set at some time during prosecution (eg, by way of a voluntary amendment or in response to an examiner's report) even if such claims are not ultimately examined or granted. Figure 1 illustrates the consequences of filing excess claims during prosecution.
Figure 1: consequences of filing excess claims during prosecution
In the above example, although only the 18 claims originally presented for examination were ultimately examined, allowed and granted, excess claim fees of C$3600 were payable when the final fee was paid in view of the set of 56 claims that were pending briefly after the examination was requested and before substantive examination commenced.
For further information on this topic please contact David Schwartz at Smart & Biggar by telephone (+1 613 232 2486) or email ([email protected]). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
Endnotes
(1) No distinction is drawn between independent and dependent claims for the purposes of excess claim fees. The fee is C$100 for each claim over 20.