On January 1, 2025, amendments to Canada’s Patent Rules came into force. Notably, the amendments to Canada’s Patent Rules provide a framework for Patent Term Adjustment (PTA), as discussed in our article here. In addition to the amendments to provide for the PTA, new miscellaneous and housekeeping amendments have also been made to the Patent Rules and are now in force. 

The Canadian Intellectual Property Office (CIPO) has introduced a number of changes in their Manual of Patent Office Practice (MOPOP) based on the amendments to the Patent Rules. While most attention has been paid to the new patent term adjustment (PTA) system, this article provides a look at some of the other notable changes to MOPOP and their impacts on patent prosecution in Canada.

The changes in CIPO’s patent practice manual discussed below are as follows:

  • Extension of time to “top-up” request for examination fee
  • Clarification of fees due
  • Claims deemed not included for calculating final fee
  • Loss of special order when requesting continued examination
  • Suspension of examination during the late fee period for a missed maintenance fee
  • Update to time period for the request for priority
  • Update regarding access of deposit of biological materials

Extension of time to “top-up” request for examination fee

In some circumstances, CIPO is authorized to extend the period of time for the full payment of fees if an insufficient amount of fees was received initially. This is often referred to as a “top-up” payment.

The existing allowed circumstances include:

  1. Paying the difference between small entity fee and the standard fee when the standard fee should have been paid (when the initial small entity fee was paid in “good faith”).
  2. Paying the difference of fees when the difference is due to erroneous information (i.e. wrong fee amount) provided by the Commissioner.

Under the new changes to MOPOP and the Patent Rules, an additional allowed circumstance for “top-up” payments is introduced (MOPOP Section 2.03.03h). An applicant can now request an extension of time to “top-up” a request for examination fee if an unintentional underpayment was made. Specifically, an extension request can be made after the end of the time limit to request examination if all of the following apply:

  1. The applicant paid an insufficient amount for the request for examination fee.
  2. The Commissioner sent a notice to the applicant acknowledging that the request for examination was made within the prescribed time.
  3. It was determined after the date of the notice that the payment was insufficient.
  4. The applicant files a statement declaring that the application for the extension is being filed without undue delay after the applicant became aware that the payment was insufficient and declaring that the insufficient amount was paid unintentionally.
  5. The applicant pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made.

However, if the “top-up” is related to small entity fees when standard fees should have been paid or if the “top-up” is a result of the Commissioner providing erroneous information in writing concerning the request for examination fee, then the separate existing rules for extension of time to “top-up” small entity fees or “top-up” fees as a result of erroneous information would apply to these situations instead (details can be found in section 2.03.03g and section 2.03.03i of the MOPOP).

In any case, under the new changes to MOPOP and Patent Rules, if the extension of time is granted, the ‘top-up’ payment will be considered to have been made on the date of the original insufficient request for examination.

Clarification of fees due

The changes to MOPOP based on the amendments to Patent Rules clarify that as a general rule, the amount of CIPO fees due is calculated using the rate as of the date of complete payment. The changes also address fees due for a request for examination and a mechanism to potentially reduce excess claims fees during the final fees calculation when excess claims were introduced in error.

The amount of CIPO fees due is calculated using the rate as of the date of complete payment

As the Patent Office may adjust the amount of certain fees annually, CIPO has clarified that in general, the amount to be paid depends on the date on which the Patent Office receives the complete fee payment (MOPOP Section 10.01.02). In other words, if payment is received before January 1 of next year, the amount of the prescribed fee to be paid is based on the rate of the current year. But if payment is received on or after January 1 of next year, the amount of the prescribed fee to be paid is based on the adjusted rate for the next year.

For example, the amount due for a maintenance fee depends on the date on which the payment is received, not the prescribed date to pay the fee.

As another example, for a request for examination, the amount due is calculated using the rate on the later of:

  • The day the request was made.
  • The day the full amount of the fee is paid or the day an amendment was made to reduce the number of excess claims to bring the request into compliance.

In the case of two or more partial payments (MOPOP Section 10.01.02a), the amount of the fee to be paid is the amount that would be payable if the full amount of the fee had been paid on the day on which the last partial payment is received. CIPO will also consider the date that the Patent Office received the complete fee to be the date that the fee was paid.

Exceptions:

For international applications (MOPOP Section 10.01.02c), the following fees are not subject to the fee adjustment rule:

  • The transmittal fee
  • the international filing fee (including associated excess page fees and fee reductions for electronic filing)
  • The search fee

For the above fees, the amount payable is as of the date of receipt of the international application.

Certain authorized “top-up” fees (e.g. “top-up” for small entities, request for examination, and erroneous information from the Commissioner) are also not subject to the fee adjustment rule. In these cases, the total fee due is calculated based on the rate at the time of the initial underpayment.

As a result of this change, the best practice to minimize costs is to pay any CIPO fees within the year of the service request or the prescribed date to pay the fee.  For a request for examination, the fee should be paid at the time of the request and if an amendment to reduce the number of claims is needed for a compliant request, the amendment should be made within the year of paying the initial fee.

Claims deemed not included for calculating final fee

The new changes to MOPOP and the Patent Rules also introduce a way to potentially reduce excess claims fees during the final fee calculation (MOPOP Section 11.05.04). In general, additional claims over 20 introduced after requesting examination that have not already been paid for may be subject to excess claims fees when the application is in condition for allowance. If a claim or claims were added in error during an amendment and this error results in an increase in the excess claims fee at the stage of allowance, it is possible to have the amendment deemed not to be included for the purpose of final fee determination. To be eligible the following criteria must be satisfied:

  • The date of the amendment, which is intended to be "deemed not included", must be on or after January 1, 2025.
  • The applicant must file a statement confirming the error and they must amend the application to remove the amendment made in error. This must be done without undue delay after the applicant becomes aware of the error and before the examiner begins the examination of the amended patent application.
  • The Commissioner must be satisfied that the circumstances justify that the claims not be included.

Loss of special order (advanced examination) when requesting continued examination

One of the mechanisms in place at CIPO for accelerated examination of an application is “special order” (also known as “advancing examination”). To initiate this process, any person can submit a request to CIPO prior to the start of examination to have an application examined out of routine order, if the regular patent approval process time is likely to prejudice the applicant's or a third party's rights.

However, now, under the amended Patent Rules, a request for continued examination made on or after January 1, 2025 for a “special order” application would return the “special order” application to its routine order (MOPOP section 11.03.01). Essentially, this means a “special order” application would lose the “fast-track” status if a request for continued examination is made on or after Jan 1, 2025.

Suspension of examination during late fee period of a missed maintenance fee payment

CIPO has introduced a new section in the MOPOP, section 11.06, and amended the Patent Rules under subsection 86(17) to indicate an additional circumstance under which the Patent Office will suspend examination of an application. The circumstances under which the Patent Office will suspend examination are:

(a) During the late fee period when an applicant does not pay the maintenance fee by its due date.

(b) During any period of deemed abandonment.

The addition of circumstance (a) in the amended Patent Rules allows CIPO to extend the window of time during which the examination of an application will be suspended. Thus, if a maintenance fee is not paid, examination of that application will be suspended until the time when the maintenance fee and the late fee is paid, or in the case of deemed abandonment, until the application is reinstated.

Update to time Period for the request for priority

CIPO has made a small, but perhaps not insignificant change, in the time period that an applicant may request for priority. This is in regard to those situations where the applicant submits approval for the laying open of their application to public inspection before the end of the confidentiality period.

Previously, section 73(1) of the Patent Rules stated that such a request for priority must be made before the date the applicant submits approval for the laying open of the application to public inspection, however the newly amended Patent Rules section 73(1)(b) indicates that this is expanded to before the day after the date the applicant submits approval for the laying open of the application to public inspection.

Update regarding access of deposit of biological materials

The Canadian Patent Office’s practices around deposits of biological materials associated with patents or patent applications have also been updated. While many of the changes to the Deposits of Biological Material section of MOPOP (section 23.10) are in regard to changes in the formal steps to obtaining a deposit of biological material, there is one change that appears to expand who can access the deposit.

A brief review of the practices around access to deposits of biological materials is helpful here. Under the current Patent Rules, an applicant is entitled to restrict access to a deposit of biological material until a patent has issued, or the application is refused, withdrawn, or deemed to be abandoned and beyond the period of reinstatement, if the applicant submits a request to the Commissioner before the application is open to public inspection. In such cases, a person may request that an independent expert be nominated by the Commissioner, and this independent expert will then be able to obtain access to the deposit.

The Patent Rules, under subsection 98(1), states that when the applicant restricts access to a deposit of biological material, a request to obtain access to said deposit can only be made by the independent expert. However, the changes to MOPOP, in subsection 23.10.07, indicate that in addition to the independent expert, a person authorized by the depositor may also be able to obtain access. This change in Patent Office practice could make it easier for third parties to access deposits of biological material, so long as the depositor has authorized them to do so.

Conclusion

The changes to MOPOP discussed above are important to understand when filing and prosecuting patent applications in Canada. Contact a Patent Agent at Gowling WLG today to discuss strategies pertinent to your particular application(s).