Introduction
Consider requesting examination of patent applications now to avoid potential fees
Timing and implications for applicants
Weighing the odds: requesting examination now versus later under new rules
Last summer, the government of Canada issued draft regulations introducing claim fees and a continued examination scheme for Canadian patent applications. The proposed rules were published for public comment in July 2021 (see Canada Gazette Part I), the first step in patent rulemaking in Canada. The second and final step for the rules to be finalised and published is expected before this summer and will likely be sooner.
This article outlines the proposed amendments to the Patent Rules and provides applicants with guidance on possible actions they can consider taking now, to avoid potential fees under the new rules.
Consider requesting examination of patent applications now to avoid potential fees
The proposed 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 (NAFTA). From 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.
Here is a summary of the proposed new rules:
- excess claim fees – the proposal is to introduce a fee of C$100 for each claim in excess of 20. The fees will be calculated when examination is requested and when the application is allowed. For instance, if there are 22 claims when examination is requested, excess claim fees of C$200 are payable at that time. If there are then 25 claims when the application is allowed, further excess claim fees of C$300 are payable with the issue fee; and
- requests for continued examination – the proposed continued examination scheme requires a request for continued examination and payment of a C$816 fee to continue examination and respond to the third examiner's report, and every second examiner's report thereafter.
Timing and implications for applicants
Should the amendments proceed, the final rules will be published in Canada Gazette Part II, taking into account public comments on the draft rules. While the exact timing is not certain, it is reasonable to expect that the final rules will be in force in Canada no later than 1 July 2022, and will likely be sooner (the proposed rule package includes amendments implementing the new World International Property Organization (WIPO) biological sequence listing standard ST.26, which is required to be in place by that date).
Importantly, the draft rules contain a legacy provision such that claim fees and continued examination fees would not apply to any application in which examination is requested within 30 days of registration of the new rules.
However, because registration may occur up to a week or two before the final rules are published, there may be very little notice of this proposed 30-day window of opportunity.
Weighing the odds: requesting examination now versus later under new rules
Based on the current information, applicants may wish to consider requesting examination now, to avoid potential excess claim fees and continued examination fees.
Requesting examination now may provide some certainty. A possible downside is that, if the proposed rules are delayed, not enacted, or not enacted in their current form, the applicant would have incurred the costs of requesting examination before it was necessary and reduced the likelihood that the results of foreign prosecution will be available to streamline prosecution in Canada once substantive examination commences. Usually, the examination request is due 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 filing date if it is before 30 October 2019.
Finally, even if the proposed rules come into force in their present form before examination is requested, an applicant would have the opportunity to avoid the payment of claim fees by amending the application to reduce the number of claims to 20 before or at the time of requesting examination.
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.