Proposed amendments to Canadian Patent Rules introduce "excess" claim fees and limit number of office actions

2 minute read
09 July 2021

Proposed amendments to the Patent Rules, if implemented would introduce excess claim fees above 20 claims and limit the number of office actions to three. The proposed amendments are open for comment until August 2, 2021 and are slated to come into force on January 1, 2022 (with a 30 day transitional period).

The stated rationale for the proposed amendments is to "better streamline the patent examination process, with a view to avoiding unreasonable or unnecessary delays in the granting of patents" in advance of Canada's implementation of the patent term adjustment (PTA) requirement in Article 20.44 of the Canada-United States-Mexico Agreement (CUSMA).

Therefore, in order to assist in meeting its obligations under CUSMA, Canada has proposed to amend its Patent Rules to:

  • impose a new fee of $100 per "excess" claim over the first 20 claims;
  • impose a new limit on the number of office actions (referred to in the amendments as "examination reports") that the patent office would write before ceasing examination;
  • create a new system to continue examination after the new 3 office action limit by way of a "request for continued examination" (RCE) and the payment of a new fee;
  • create a new class of office action called a Conditional Notice of Allowance (CNOA) to allow applicants to address minor "formality" defects outside of the new limit on office actions;
  • adopt the new PCT sequence listing standard; and
  • and make various other "housekeeping" amendments.

Should you have any question or would like to discuss this article further, please contact a member of our Life Science Group.

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