Significant amendments to the Patent Rules introducing excess claim fees and requests for continued examination were published on June 22 and will come into force on October 3, 2022. Below are key points, followed by next steps to consider before October 3, 2022, to minimize their impact.
The stated purpose of these amendments is to reduce pendency and streamline examination, in alignment with Canada’s commitment under the Canada–United States–Mexico Agreement (“CUSMA”) to make best efforts to process patent applications in an efficient and timely manner. CUSMA requires, by January 1, 2025, that Canada grant patent term adjustment (“PTA”) to compensate for Patent Office delays in issuing patents on applications filed on or after December 1, 2020.
The amendments introduce a new excess claim fee to encourage compact applications, a new Request for Continued Examination procedure to urge faster prosecution, and a new Conditional Notice of Allowance to reduce the number of communications.
Excess claim fee
Currently, there is no limit to the number of claims in an application.
The amended Rules will introduce a new excess claim fee of $100 (CAD) per claim in excess of 20 claims (a reduced fee applies for small entities). Excess claim fees are assessed at the time of request for examination and at the time of final fee payment:
- At the time of request for examination, the excess claim fee is $100 for each claim in excess of 20 that is included in the application at the time the request for examination is made; and
- At the time of final fee payment, the excess claim fee is $100 for each claim in excess of 20 that is included in the application, at any time during the period after the request for examination is made and before the final fee is paid, and that was not already paid for at the time of the request for examination. In a significant departure from the proposed Rules, the amended Rules calculate the excess claim fee at the time of final fee payment based on the maximum number of excess claims at any time after the request for examination is made for which an excess claim fee at request for examination was not paid.
For example, consider an application which has 30 claims at filing, 22 claims at the time of request for examination, 29 claims at the time of responding to an Office Action, 27 claims following a Voluntary Amendment, and 25 claims at allowance. Excess claims at filing (or national entry) do not count towards excess claim fees. At the time of request for examination, the excess claim fees would be $200 (22-20=2 excess claims). The maximum number of excess claims after the request for examination, and which have not already been paid for, counts towards excess claim fees. As a result, excess claim fees of $700 would be payable with the final fee (29-22=7 additional excess claims that were not already paid for). Overall, the total excess claim fees would be $900.
A claim that defines subject matter in the alternative, including a dependent claim, counts as a single claim for the purpose of calculating excess claim fees. For example, the alternatives and multiple dependencies in the following claims would not count towards excess claim fees: “A compound wherein R is selected from the group consisting of A, B, and C”, and “The computer-implemented method of any one of claims 1 to 4”.
The time limit for requesting examination and paying the examination fee, including any excess claim fee, cannot be extended upon request.
Request for Continued Examination (“RCE”)
Currently, there is no prescribed limit on the number of Office Actions before a Notice of Allowance or Final Action issues. Also, currently, to re-open prosecution after a Notice of Allowance, an applicant must request that the Notice of Allowance be withdrawn.
The amended Rules will introduce a new RCE procedure which imposes limits at various stages of prosecution, requiring an applicant to submit an RCE and pay an RCE fee of $816 to continue examination (a reduced fee applies for small entities).
In particular, if three Office Actions issue after request for examination, then an Examiner will send a notice requiring the applicant to submit an RCE and pay the RCE fee to continue examination.
If two Office Actions issue after the most recent RCE, then the Examiner will send a notice requiring the applicant to submit another RCE and pay another RCE fee.
The RCE and RCE fee payment must be made within four months from the notice date. If this is not done, then the application will become abandoned and can be reinstated as of right within one year by submitting a request for reinstatement and RCE, and paying the reinstatement and RCE fees. Notably, when the failure to respond to the Office Action and the failure to submit an RCE are both referred to in the request for reinstatement, only a single reinstatement fee is required.
If a Notice of Allowance (or Conditional Notice of Allowance discussed below) is sent but the applicant wishes to re-open prosecution, the Notice can be set aside if the applicant submits an RCE and pays the RCE fee within 4 months from the notice date, or before the final fee payment, whichever is earlier. This replaces the current mechanism of requesting withdrawal of a Notice of Allowance to return to examination.
The time limit for submitting an RCE and paying the RCE fee cannot be extended upon request.
Conditional Notice of Allowance
Currently, if an application is allowable but for certain minor defects, then the Examiner must send an Office Action requiring the applicant to comply. Sometimes, the Examiner initiates an interview, inviting the applicant to submit a Voluntary Amendment to avoid an Office Action.
Under the amended Rules, if an application is allowable but for certain “minor defects”, then the Commissioner will send a Conditional Notice of Allowance requiring the applicant – within four months from the notice date – to respond by making certain amendments or submitting arguments as to why the application does comply, and paying the final fee. This procedure may reduce communications by permitting the applicant to address the defects and pay the final fee at the same time.
The time limit for responding to the Conditional Notice of Allowance cannot be extended upon request.
Impact of the October 3, 2022 date
Excess claim fees, and RCEs following the three Office Action limit after request for examination, will not apply to applications for which examination is requested before October 3, 2022.
RCEs following the two Office Action limit after an RCE will apply to applications for which continued examination is requested on or after October 3, 2022.
RCEs to set aside a Notice of Allowance or Conditional Notice of Allowance will apply to all applications on or after October 3, 2022.
Consider requesting examination before October 3, 2022, to avoid excess claim fees and certain RCEs
In particular, consider requesting examination of pending applications, filing (national entry) applications in Canada with a request for examination, and filing (directed) divisional applications with a request for examination before October 3, 2022. The deadline for requesting examination is 4 years or 5 years from the (PCT) filing date, depending on whether the (PCT) filing date is on/after or before October 30, 2019, respectively.
Requesting examination before October 3, 2022 will be particularly beneficial where applications have large claim sets or will take longer to prosecute. One reason relates to double patenting, whereby applicants seek protection from double patenting by adding claim sets to a pending application to trigger a unity of invention objection, and then divide out the added claims if directed by the Patent Office. Another reason relates to claim drafting, notably with respect to preferred embodiments and dosage claims.
If examination is requested on or after October 3, 2022, consider suitable techniques for avoiding or minimizing excess claim fees and RCEs
In particular, consider filing a Voluntary Amendment to limit the number of excess claims before or at the time of request for examination, limiting the number of additional excess claims during prosecution, submitting independent claims of all desired claim sets to trigger a unity of invention objection, claiming in the alternative, using multiple dependencies, correcting known defects, and presenting foreign claims. While the calculation for PTA in Canada has not yet been established, avoid filing an RCE after allowance if possible as it may be considered to be a delay by the applicant that negatively impacts PTA.