The Canadian patent regime has always been unique and flexible. However, many of these unique aspects are disappearing in order to bring Canada’s patent regime into procedural harmony with the practice in other jurisdictions.
One of the advantages under the current Canadian patent regime is that Applicants may include as many claims (i.e. dependent or independent) as desired without having to pay excess claims fees. This is unlike the practice in other jurisdictions, such as the United States and Europe, where excess claims fees are the norm.
Nevertheless, one of the upcoming changes to the Canadian patent regime is the introduction of excess claims fees. This change is being implemented in order to meet the obligations in Article 20.441 of the Canada-United States-Mexico Agreement (“CUSMA”) which states, in part, that patent applications should be processed “in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays.”
New Canadian Patent Rules, due to come into force in 2022, will introduce a $100 surcharge for each claim in excess of 20 claims. Applications with 20 claims or fewer would not be subject to these new fees and Applicants would pay only the current rate for a request for examination or the final fee. According to the Canadian Intellectual Property Office (“CIPO”), this measure will “encourage applicants to file compact application sizes and would discourage the filing of an unnecessarily large number of claims during the examination,” and thereby reduce patent pendency.2
Excess claims fees will be applied at two points in the application process:
- at the time of requesting an examination for each claim in excess of 20 claims; and
- at the time of payment of the final fee, for each claim in excess of the greater of:
- 20 claims on the day the notice of allowance is sent, and
- the sum of 20 claims plus the number of excess claims for which a fee was paid at the time of the request for examination.
Practice Note: Examination of a Canadian patent application is not automatic, and may be deferred up to four years from the filing date (if the filing date is on or after October 30, 2019) or up to five years from the filing date (if the filing date is before October 30, 2019). It is common practice to delay examination of an application in Canada, especially for Applicants with corresponding applications in other jurisdictions. Applicants usually wait for a favourable examination outcome in the other jurisdictions, and then amend the claims in the Canadian patent application accordingly. This strategy often reduces prosecution time, the number of office actions and prosecution costs.
In light of the upcoming changes to the Patent Rules, Applicants should strongly consider reviewing their Canadian patent portfolios, and for patent applications with more than 20 claims, weigh the pros and cons of delaying examination or requesting examination before the new Patent Rules come into force.