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Major overhaul of Canadian patent regulations

June 22, 2022

Just three years after making significant modifications to the Patent Regulations, Canada is again making major changes to the rules governing patent examination. This time, the changes will drastically impact filing and prosecution strategies for applicants. The published amendments may be found here.

Canada has been somewhat unique in that applicants have been free to include as many claims and as varied claim scope as they wanted with no cost consequences. This meshed well with Canada’s strict treatment of double-patenting and self-collision. That changes on October 3, 2022, when Canada will begin charging excess claim fees and capping the number of communications in examination.

Excess claim fees

Canada will introduce excess claim fees for each claim in excess of 20 total in an application for any request for examination filed on or after October 3, 2022. A multiple-dependent claim will count as one claim. The excess claim fee is currently set at $100 per claim in excess of 20 total.

Excess claim fees will also be payable at grant for every claim in excess of 20 that was in the application at any point during prosecution, to the extent those excess claim fees were not paid at the time of paying the examination fee.

As an example, this means that if an applicant has 25 claims at the time of requesting examination, the applicant must pay excess claim fees for 5 extra claims. During examination it may occur that claims are added such that there are 40 claims pending in the application at some point. Later in prosecution some of those may be canceled such that there are fewer than 25 in the application at the time of paying the final fee for grant. At that point you will also have to pay for the 15 excess claim fees over and above the 5 you paid for at the time of requesting examination.

Request for continued examination

The initial request for examination and examination fee will entitle an applicant to at least three “notices” during examination (i.e. examination reports). If a third notice is issued, the applicant will then be compelled to request continued examination and pay a continued examination fee (currently set at the same level as the original request for examination fee) in order to continue prosecution. Thereafter the applicant will be entitled to two notices during examination until a further request for continued examination will be required.

Action to be taken before October 3, 2022

Obviously most applicants would prefer to avoid the potential cost of excess claim fees and continued examination fees. To avoid the impact of the new fees, any applicant with a pending application for which a request for examination has not yet been made should consider filing a request and paying the examination fee before October 3, 2022.

In addition, any applicant that is considering a divisional application (perhaps due to an earlier unity of invention objection), or that has a pending PCT application and is considering a Canadian national phase application, should consider ensuring those applications are filed and that a request for examination is made before October 3, 2022.

In future, we will provide additional suggestions for strategies to use in order to minimize impact of the new fees for those applications subject to the new regime after October 3, 2022.