In order to avoid Canada's new proposed fee for excess claims, applicants should consider requesting examination of their patent applications before the end of the year.

As previously reported, the proposed amendments to the Patent Rules, more details available here, are likely to come into force in early 2022.

If the new Rules are implemented, the new "excess" claim fees will be applied at two points in the application process:

  1. At the time of making a request for examination ($100 per excess claim over the first 20 claims); and/or
  2. At the time of payment of the final fee ($100 per excess claim) for "excess" claims for which an excess claim fee was not already paid at the time of the request for examination

However, based on the transitional provisions proposed with the amendments, the new excess claim fees, will not apply if, before the coming into force of the new Patent Rules, the Applicant has already:

  • Requested examination;
  • Paid the examination fee as it currently reads; and
  • Paid any applicable late fees.

CIPO's rationale for proposed excess claims fee

According to the Regulatory Impact Analysis Statement (RIAS), the rationale for implementing excess claim fees is that excess claims (e.g. more then 20 claims) "require more of CIPO's examination resources" and this change will motivate applicants to file "concise applications and to more quickly bring their applications into compliance with the Canadian Patent Act and Patent Rules". The RIAS goes on to state that the proposed amendments would "promote a better balance between the financial burden borne by the average applicants and those applicants that consume more of CIPO's resources" to help ensure that the patent office and applicants are "efficiently processing and disposing of applications, with a view to avoiding unreasonable delays."

However, some feedback on the proposed excess claims fees received from IP firms and industry groups explained that "there are underlying issues with the Canadian patent system that are the leading causes of a high number of claims and protracted prosecution causing longer patent pendency."

For example, it was noted that one reason for a high number of claims present in Canadian applications is the unique application of the double patenting doctrine in Canada. Specifically, divisional applications are vulnerable to an obviousness-type double patenting objection, and an applicant cannot file a terminal disclaimer like in the U.S. Therefore, applicants often choose to include a larger number of claims in an application, as a forced divisional is less susceptible to a double patenting objection as compared with a voluntary divisional.

Further, some IP firms and industry groups commented that elements common to other jurisdictions, such as excess claims fees, do not necessarily integrate with the Canadian patent system and will only increase costs for applicants and complexity in the system, which might result in applicants choosing not to engage the patent system in Canada.

The new Rules will come into force on the 30th day after the day on which the new Rules are registered (i.e. the new Rules will take effect for any application where examination is requested on or after that date). The 30-day consultation period on the amendments has ended; however, it is not certain when the final Rules will be registered, but it is expected to be early 2022.

Should you have any specific questions about this article or would like to discuss it further, you can contact the authors or a Gowling WLG patent agent.