Another Round of Amendments to the Canadian Patent Rules – Speeding Up Prosecution in Consideration of Patent Term Adjustment

July 26, 2021
By Patricia Folkins and Dominique Lambert

In anticipation of their obligation to introduce Patent Term Adjustment provisions into Canadian Patent Law under the Canada-United States-Mexico Agreement (CUSMA), passed March 13, 2020, the Canadian Intellectual Patent Office (CIPO), on July 3, 2021, published in the Canadian Gazette, Part 1 (CG1), proposed amendments to the Patent Rules1 with the stated goal of streamlining the examination process. 

There are three significant proposals that mark a distinct change from current practice before CIPO.  The first includes an excess claims fee of $100 per claim for any claim over and above 20, the second is the introduction of a Request for Continued Examination (RCE) procedure after 3 examination reports (office actions) have been issued and the third is a new Conditional Notice of Allowance (CNOA) which will be issued at the end of prosecution when only minor defects need to be corrected. 

Under the proposed changes to introduce excess claims fees, CIPO has stipulated that the fees will be due at the time of requesting examination and at the time of paying the final fee. It is proposed that the costs are to be assessed based on the total number of claims only, with no extra fees for multiply dependent claims or for extra independent claims.  CIPO is fully aware that Applicants may file a voluntary amendment after the request for examination is made to reintroduce claims in excess of 20.  It has been indicated that CIPO has permitted this to allow for circumstances where an Applicant wishes to have all claims assessed for unity of invention so that if there is a lack of unity, a unity rejection is on record to guard against future attacks on the validity of divisional patents in view of Canada’s strict double patenting provisions.2 However, if an Applicant wishes to avoid excess claims fees, the total number of claims will have to be reduced back to 20 or less by the time that the final fee is paid.  Note, if excess claims fees are paid at the time of requesting examination, the amount that is due when paying the final fee will only be the amount for the number of claims above that at the time that examination was requested.

With respect to the new RCE provisions, CIPO has proposed that Applicants receive a maximum of 3 examination reports, or a notice of allowance, whichever comes first, after a request for examination is made. Under the current proposal, examination reports based solely on a unity rejection would be counted towards the examination report total. If the Applicant wishes to continue with prosecution, then the proposed amended Patent Rules stipulate that an RCE be filed along with the corresponding fee, which at present is proposed to be $816/$408 at the standard/small entity rates.  After the RCE, it is proposed that the Applicant can receive up to 2 additional examination reports or a notice allowance, again whichever comes first.  The filing of multiple RCEs to receive an additional 2 examination reports or a notice of allowance will be possible under the proposed new regime.  It is further proposed that the RCE process be used to replace the current mechanism to request withdrawal of a notice of allowance, for example, to introduce claims to additional or alternate subject matter, which mechanism itself was just introduced in the amendments to the Rules that came into force on October 30, 2019.3

As stated above, the proposed CNOA will be issued when an application is in condition for allowance but for certain minor defects.  The Applicant will have to address the minor defects and pay the final fee and, if all of the requirements of the CNOA are addressed, the application will proceed to allowance.

The proposed 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 and a new extension of time mechanism for when an Applicant paid incorrect fees due to incorrect information provided by the Commissioner.

The new Patent Rules will take effect for any application where examination is requested on or after the 30th day from the day on which the new Rules are registered.  At this time, we are in a 30-day consultation period, ending on August 2, 2021, during which stakeholders are invited to provide comments on the proposed amendments. It is difficult to assess when the final Rules will be registered but the time period between publication in CG1 and registration is typically around 6 months.  Therefore, barring any delays that might occur if a general election is called in Canada, we might expect these new Rules to come into force early in 2022.

As stated earlier, the objective of the amendments proposed by CIPO in this recent round of Patent Rules amendments is to change Applicant behaviour to ensure prosecution of patent applications is concluded in a timely manner.  With the introduction of PTA under CUSMA, CIPO is concerned that Applicants may lose interest in concluding prosecution in an efficient and timely manner and believes that amendments are needed since the current regime allows Applicants to delay examination in ways that could lead to excessive PTA compensation, a situation that CIPO believes is not in the best interest of innovators in Canada. It is interesting to note that under CUSMA, any patent application with a filing date on or after December 1, 2020, will be subject to any future PTA provisions.4  This clearly provides an incentive for CIPO to implement these Rules changes sooner rather than later.  

The authors of this article are both members of the Intellectual Property Institute of Canada’s Patent Committee and therefore will be actively involved in the review of the proposed amendments and submission of comments before the end of the consultation period.  Look for a future article with updates and recommended actions for patent Applicants once the amended Patent Rules have been finalized and registered.

4While 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.

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