Reminder – Amendments to the Canadian Patent Rules are coming
Following our article of July 26, 2021, Applicants are reminded that changes to Canadian Patent Rules (“Rules”) are expected in 2022. As previously reported, the Canadian Intellectual Patent Office (CIPO), on July 3, 2021, proposed amendments to the Patent Rules1 with the stated goal of streamlining the examination process.
Although the final text of the Rules is still unknown and could change, the proposed amendments introduced notable changes to current practice before CIPO that should be taken into consideration now in view of the expected coming-into-force in the next few weeks/months. Specifically, a first proposal includes an excess claims fee of $100 per claim for any claim over and above 20 which will be due at the time of requesting examination and at the time of paying the final fee; and a second being the introduction of a Request for Continued Examination (RCE) procedure after 3 examination reports (office actions) have been issued.
Under the proposed amendments, the new Rules will take effect for any application where examination is requested on or after the coming-into-force. As such, if an Applicant wishes to avoid excess claims fees and limitations on the number of examination reports as proposed, it is strongly recommended to consider requesting examination on any application currently at the pre-examination stage.
It is also notable that the streamlining of the examination process, which as noted above is the stated goal of the proposed new Rules, is in consideration of future Patent Term Adjustments (PTA) provisions, imposed under the Canada-United States-Mexico Agreement (CUSMA). 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 having a filing date on or after December 1, 2020 before CIPO and try to avoid actions that may result in a reduction in PTA that the application may otherwise be eligible. Such actions under the amended Rules may include filing one or more RCEs.
We will provide updates and recommended actions for patent Applicants once the amended Patent Rules have been finalized and registered.