Canada has long been known as a jurisdiction friendly to patent applicants. This is due to reasons such as relatively low official costs, no excess claim fees, no restrictions on the number of claims or multiple dependencies, and no limit on the number of Examination Reports (Office Actions) that may be issued during examination, among other benefits. As Canada moves to implement a patent term adjustment regime as required by the Canada-United States-Mexico Agreement (CUSMA), there will be changes to the Canadian Patent Rules in an attempt to streamline the examination process with a view to avoiding unnecessary delays.
This article highlights some of the proposed changes to the Patent Rules (published in the Canada Gazette), and outlines how these changes may impact prosecution and affect prosecution strategies. While the final version of the Patent Rules has not yet been released, such changes may come into force early in 2022, with a 30 day transition period after the new Patent Rules are registered.
Examination Reports and Requests for Continued Examination (RCE)
There is currently no limit on the number of Examination Reports that may be issued before examination ceases by allowance or final action. Further, there is no requirement to request continued examination after receiving a certain number of Examination Reports.
The current mechanism for re-opening prosecution after issuance of a Notice of Allowance (e.g. to add new claims) is to request that the Notice of Allowance be withdrawn.
The proposed amendments limit the number of Examination Reports that may be issued at different stages of prosecution before examination ceases.
In particular, applicants may receive up to three Examination Reports after requesting examination. To continue examination of the application after three Examination Reports, the applicant must file an RCE. The proposed fee in relation to an RCE is $816 CAD or $408 CAD for a small entity.
Upon submitting an RCE and paying the prescribed fee, the applicant may receive up to two further Examination Reports before examination ceases again. The applicant may file a further RCE at this point.
Should the examiner issue a Final Action, examination would cease and the applicant would have the opportunity to appeal to the Patent Appeal Board.
Examination also ceases if a Notice of Allowance or Conditional Notice of Allowance (discussed below) is received during the examination process. To re-open prosecution of the application at this point, the applicant must file an RCE and pay the prescribed fee.
In light of the new RCE requirements, applicants may wish to consider strategies to avoid unnecessary Examination Reports during prosecution.
Excess claim fees
There are currently no excess claim fees in Canada.
The proposed amendments introduce excess claim fees where there are more than 20 claims in a patent application. The proposed fee for each claim in excess of 20 is $100 CAD or $50 CAD for a small entity. Notably, a multiple dependent claim counts as one claim, which leaves open the possibility of amending the claims to avoid excess claim fees, while retaining the effective number of claims.
The excess claim fees are first evaluated at the time of filing a Request for Examination, and then again upon payment of the final fee. Specifically, at the time of requesting examination, applicants must pay for each claim in excess of 20. At the time of payment of the final fee, applicants must pay for each claim in excess of 20 that was not paid for at the time of requesting examination.
Various techniques for avoiding excess claim fees at the time of requesting examination may be employed. These techniques will include consideration of multiple dependent claims, possible future divisional applications, and claims on file in other jurisdictions.
Conditional Notice of Allowance
There is currently no Conditional Notice of Allowance in Canada. In some instances where only minor defects remain, Examiners may initiate a telephone interview with patent agents to request submission of a voluntary amendment to address the defects and avoid issuance of a further Examination Report.
The proposed amendments introduce a Conditional Notice of Allowance that would inform the applicant that the application is in condition for allowance, but would identify certain minor defects that must be addressed along with payment of the final fee. As discussed above, a Conditional Notice of Allowance would cease examination.
Conditional Notices of Allowance may avoid previous back-and-forth telephone calls with the examiner and the filing of voluntary amendments, and will allow the applicant to address defects and pay the final fee at the same time.
The proposed changes to the Patent Rules will impact the prosecution process in Canada, introducing excess claim fees, RCEs and associated limitations on Examination Reports, and Conditional Notices of Allowance. For applicants who employ appropriate strategies to avoid unnecessary excess claim fees and RCEs, Canada will remain a jurisdiction friendly to them.
As an initial matter, applicants with presently pending applications should consider requesting examination now before the new Patent Rules formally come into force (or at least within 30 days from when the new Patent Rules are registered) to avoid excess claim fees and RCEs. For more information, please see our earlier article: Patent applications - consider requesting examination now to avoid proposed excess claim fees, and contact a patent agent at Gowling WLG to discuss strategies pertinent to your particular application(s).
At Gowling WLG, our patent agents are well positioned to navigate the amendments to the Patent Rules and suggest prosecution strategies to applicants seeking quality patent protection without incurring unnecessary expense.