22 Jul 2022

Benoit Cote

[PUBLICATION] Amendments to the Canadian Patent Rules: changes on the horizon!

The Government of Canada announced a set of amendments to the Patent Rules to streamline examination. The amendments will come into force as of October 3, 2022 and will add significant constraints to what was considered a flexible examination system.

Most of these constraints can temporarily be avoided by requesting examination of pending applications by September 30, 2022. Applicants with pending PCT Applications & Paris convention applications considering to file in Canada may need to do so early and request examination by September 30, 2022. The same applies to Applicants having pending Canadian Applications and that wish to file divisional applications therefrom.

The major highlights of these changes are summarized below.

Office Actions

The current system puts no limit on the number of Office Actions. A single examination fee can keep the prosecution going until a notice of allowance or a final office action is issued.  The new rules introduce a continued examination practice (RCE) whereby after requesting examination the Applicant may receive up to three office actions and then examination will cease. To continue, the Applicant must request/pay for an RCE. The fee for the RCE is the same as that of the examination request. Every RCE allows for two more Office Actions.

Number of Claims

With respect to the number of claims, the current system does not impose any excess claim fees, but this too will change under the new Rules.

From October 3, 2022, the number of claims is taken into consideration at the time of requesting examination, whereby any claim in excess of 20 will cost the Applicant CAN $100 (at the standard entity rate), regardless of whether the claim is independent, dependent or has multiple dependencies.  Additionally, if amendments are made during the examination which increase the number of claims beyond what was paid for at the time of requesting examination, then the highest number of claims that was put on file (at any point) will be taken into consideration when the final fee is paid, to account for the additional claims.

Applicant will have the opportunity to amend the claims to reduce the number of claims prior to, or concurrently with, requesting examination.

Conditional Notices of Allowance

The new rules also introduce a Conditional Notice of Allowance practice that will indicate that the application is allowable subject to rectifying minor defects. This will also streamline the process and will reduce additional back and forth with CIPO.

Recommendations

In view of the above, we strongly recommend benefitting from the flexibility of the existing patent examination system in Canada.

Applicants with pending Canadian Patent Applications should consider filing examination requests prior to September 30, 2022. Applicants with PCT Applications and Paris convention Applications should consider filing in Canada earlier and requesting examination prior to September 30, 2022. The same goes for Applicants who wish to file divisional Applications from pending Canadian applications.

We would be happy to answer any questions you may have about the new changes or to discuss a new strategy with respect to Canadian filings.

—

Ibrahim Tamer, Elec. Eng., Partner, Patent Agent.

Mathieu Miron, Ph.D., Partner, Patent Agent.