04 Mar 2022

[ARTICLE] A streamlined process for patent examination in Canada coming in 2022

Author : Marilyne Séïde, Lawyer & Patent Agent Trainee.


On July 3rd, 2021, the Canadian Intellectual Property Office (CIPO) suggested regulatory amendments to the Patent Rules to reduce the size of patent applications and patent pendency in order to implement the patent term adjustment (PTA) obligation pursuant to the Canada-United States-Mexico Agreement (CUSMA), and to ensure that the standard for the presentation of sequence listings remains consistent with the international standard of the Patent Cooperation Treaty (PCT).

Here is a summary of the proposed changes.

Fee for excess claims

In order to encourage applicants to reduce the number of claims, CIPO intends to impose a new fee for excess claims beyond 20 claims. Such excess claim fees already exist in most major patent systems. The standard fee for each excess claim would be $100. This fee would be applied at the time of filing a request for examination (RE), and then possibly at the time of payment of the final fee (i.e., the fee required to grant a patent) if claims are added during the examination process.

Request for continued examination (RCE) requirement

In order to reduce the processing time for patent applications, CIPO is considering setting up a request for continued examination (RCE) procedure, which already exists in several jurisdictions.

According to the proposed process, examination following a RE would cease after a maximum of three examination reports or receipt of a Notice of Allowance (NOA) unless the applicant files a RCE and pays a prescribed fee which would be $816. Filing a RCE and paying the prescribed fee would allow the applicant to receive up to two additional examination reports or a NOA, after which the examination would cease again. However, it would then be possible to file an additional RCE.

Conditional Notice of Allowance (CNOA)

CIPO is expected to create a new office action called a Conditional Notice of Allowance (CNOA)

to reduce the number of examination reports issued. This CNOA, issued at the discretion of the Commissioner, would inform the applicant that the application is deemed acceptable but that minor defects must be corrected. The applicant would have to address the defects and pay the final fee, following which the application would be granted.

Changes to the form of sequence listings

The World Intellectual Property Organization (WIPO) has brought to the PCT a new standard for the presentation of sequence listings in a patent application (new PCT standard “ST.26”) which will come into force on July 1, 2022, obliging its signatories to modify their national patent laws in order to align their patent requirements with those of the PCT.

Therefore, CIPO plans to make changes to the form of sequence listings so that Canadian patent law remains aligned with the requirements of the PCT.

Housekeeping amendments

CIPO is also proposing various amendments to make the patent application process more flexible and to put in place new protection measures for applicants. This would include, among other things, making it possible to correct obvious errors in the translation of certain documents provided to CIPO, and introducing an extension of time mechanism in cases where the applicant has paid an incorrect fee amount as a result of erroneous information provided by CIPO.

To be followed

We will keep you informed of developments regarding these regulatory amendments proposed by CIPO.

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