Excess claim fees
Requests for continued examination
The Rules amending the Patent Rules(1) were registered on 2 June 2022 and will largely come into force on 3 October 2022. The rules introduce claim fees and a continued examination scheme to Canadian patent practice and are similar to draft rules published for public comment in 2021 (for further details, see "New year, new patent rules for excess claim fees and continued examination").
The 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. Commencing 1 January 2025, CUSMA requires Canada to grant patent term adjustment for Patent Office delay for all applications filed on or after 1 December 2020.
This article outlines why patent applicants should consider requesting examination of Canadian patent applications before 3 October 2022 in order to avoid application of the claim fee and continued examination rules.
The rules introduce a fee of C$100(2) for each claim in excess of 20. Claim fees are first calculated and payable when examination is requested. They are calculated again when the final fee (ie, the issue fee) is paid.
In a significant departure from the draft version of the rules, 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.
An example of the excess claim fee calculation is provided in Figure 1.
Figure 1: example claim fee calculation
Thus, in the above example, a total of C$1500 in excess claim fees must be paid, because the greatest number of claims pending at any time between the date examination was requested and the date the final fee was paid was 35 (ie, 15 claims in excess of 20).
Claim fees can be avoided by filing an amendment to reduce the number of claims at any time prior to or together with the request for examination. The deadline for requesting examination is four years from the Canadian (Patent Cooperation Treaty (PCT)) filing date if the filing date is on or after 30 October 2019, and five years from the Canadian (PCT) filing date if the filing date is before 30 October 2019.
Alternatives within a claim do not count towards the claim fee calculation. For example, a claim directed to "A compound selected from the group consisting of A, B, C, D, and E" counts as one claim, not five. Similarly, multiple claim dependencies are permitted, and do not count towards the claim fee calculation. For example, a dependent claim "6. The compound according to any one of claims 1 to 5" counts as a single claim. Moreover, multiple dependent claims may depend from other multiple dependent claims.
Excess claim fees are not payable in any application in which examination is requested before 3 October 2022. Applicants should therefore consider requesting examination now to avoid the prospect of paying excess claim fees.
Requests for continued examination
The new continued examination scheme requires a request for continued examination (RCE) and payment of a C$816(3) fee to continue examination and respond to the third examiner's report and every second examiner's report thereafter.
The new RCE rules do not apply to applications in which examination is requested before 3 October 2022. As above, patent applicants may therefore benefit by requesting examination now to avoid the RCE requirements.
The amended rules require compliance with new World Intellectual Property Organization (WIPO) sequence listing standard ST.26 for Canadian patent applications that have a filing date on or after 1 July 2022.
Transitional provisions permit patent applications that have a filing date before 1 July 2022 to contain a sequence listing in either the new WIPO sequence listing standard ST.26 or the previous ST.25 format.
Because the Canadian filing date of a PCT application entering the Canadian national phase is the PCT international filing date, the new sequence listing rules will have immediate impact only for non-PCT applications.
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.
(1) Please see a web version here.
(2) The C$100 excess claim fee is reduced 50% to C$50 for small entities. In brief, a "small entity" is an entity that has no more than 50 employees or that is a university, and that has not transferred or licensed any right or interest in a claimed invention to another entity that is not a small entity and has no obligation (other than a contingent obligation) to do so.
(3) The C$816 continued examination fee is reduced 50% to C$408 for small entities.