Amendments to the Canadian Patent Rules are coming into force on October 3, 2022
The final text for amendments to the Patent Rules (Rules), previously announced (see our article published on July 26, 2021), was registered at the Orders in Council of Canada on June 2, 2022, and will be published in the Canadian Gazette, Part 2 (CG2) on June 22, 2022, for a coming-into-force date for most provisions of October 3, 2022. The goal of these new Rules is to streamline the examination process, in anticipation of the Canadian Intellectual Property Office's (CIPO) obligation to introduce Patent Term Adjustment (PTA) provisions into Canadian Patent Law under the Canada-United States-Mexico Agreement (CUSMA).
A significant change to current practice before CIPO includes the introduction of excess claims fees of $100 per claim for any claim over and above 20. Although the final text is mostly consistent with the proposed amendments to the Patent Rules1 published by the CIPO, on July 3, 2021, the calculation of excess claims fees at allowance has been revised. It was previously proposed that excess claims fees would be calculated based on the number of claims at the time of requesting examination and at the time of paying the final fee. However, the final text states that excess claims fees will be due at the time of requesting examination and reconsidered at the time of paying the final fee based on the number of claims included in the application at any time between the request for examination and the final fee payment. As such, Applicants will need to be mindful of this provision throughout prosecution when introducing claim amendments if they want to avoid excess claims fees. However, it is worth noting that multiple dependencies and claims in the alternative will still be counted as a single claim for the purpose of calculating claims fees.
A second important shift is the introduction of a Request for Continued Examination (RCE) procedure after three (3) examination reports (office actions). After a first RCE request, the limitation on the number of examination reports will go down to two (2), after which a further RCE will be required to continue examination, and so on. Furthermore, if a Notice of Allowance (NOA) is received but further amendments to the application are desired (except for correction of obvious errors), an RCE request must be made, replacing the current request for withdrawal of NOA procedure. An RCE fee, in the same amount as the regular examination fee, will be due in either situation.
Under transitional provisions of the new Rules, the above-mentioned provisions relating to excess claims fees and RCE procedure will take effect for any application where examination is requested on or after the coming-into-force date of October 3, 2022. As such, if an Applicant wishes to avoid excess claims fees and limitations on the number of examination reports, they must request examination on any application currently at the pre-examination stage before October 3, 2022.
Perhaps a less drastic change, but still notable, is the introduction of a Conditional Notice of Allowance (CNOA), where the Examiner considers that the application would be allowable but for minor defects, setting a 4-month deadline to correct these defects. However, only amendments corresponding to defects identified in the CNOA will be accepted when filing the response.
The changes also include other “housekeeping” amendments to the Patent Rules, such as provisions to allow flexibility to correct obvious errors in translations, changes to refer to the Patent Cooperation Treaty (PCT) sequence listing standard set out in the World Intellectual Property Standard ST.26 (provisions on sequence listings will take effect on July 1, 2022) and a new extension of time mechanism for when an Applicant paid incorrect fees due to incorrect information provided by the Commissioner.
As a reminder, under CUSMA, any patent application with a filing date on or after December 1, 2020, will be subject to any future PTA provisions. While we do not yet know how PTA will be calculated, we do know that CUSMA requires that patents granted more than 5 years from the filing date or 3 years from the request for examination date may be eligible for PTA. Applicants should therefore keep this in mind when prosecuting any current application before CIPO and try to avoid actions that may result in a reduction in PTA for which the application may otherwise be eligible. Such actions under the amended Rules may include filing one or more RCEs.