Proposed Amendments to the Canadian Patent Rules to Introduce Excess Claim Fees and Requests for Continued Examination
Major proposed amendments to the Canadian Patent Rules were published on July 3, 2021, by the Canadian Intellectual Property Office (CIPO). The purpose of the proposed amendments is two-fold: to bring Canadian patent practice in line with the Canada-United States-Mexico Agreement (CUSMA), particularly regarding Canada’s obligation to streamline patent prosecution by creating reasonable time limits and, in the long-term, allowing for patent term adjustments, and further to bring the Canadian Patent Rules in line with obligations under the Patent Cooperation Treaty (PCT) regarding sequence listings and translations. The proposed amendments have progressed through the commentary phase and, once finalised and registered, will come into force within 30 days of registration. The proposed amendments related to the PCT obligations under Sections 1 and 5 will, however, come into effect on January 1, 2022.
This article provides only some notable points related to the introduction of excess claim fees and requests for continued examination. The full proposed amendments to the Patent Rules can be found in the Canada Gazette.
Excess Claim Fees
Currently, Applicants are not limited in the number of claims submitted with a Canadian patent application. Instead, Applicants incur fees at payment of the final fee when the number of pages exceeds one-hundred. The proposed amendments to the Patent Rules would introduce a payment of $100 (halved for Small Entities) for each claim in excess of twenty in a Canadian patent application. Patent claims structured in the alternative, however, would be regarded as a single claim for purposes of determining excess claim fees.
These excess claim fees would fall due both at filing a Request for Examination, and later at the payment of the final fee of grant, depending on number of claims in the application at those times. For the former, fees for each claim in excess of twenty would be payable at the date of the Request for Examination. For the latter, fees for each claim in excess of twenty on the date of final payment for which excess claim fees were not paid at time of requesting examination would be payable. As such, should new claims be introduced during prosecution of the Canadian application, bringing the total number of claims over twenty, excess claims fees will become payable thereon at the time of receiving the Notice of Allowance. If the number of claims is reduced during prosecution to twenty or less, however, a refund will not be paid.
According to the proposed amendments to the Patent Rules, if the Request for Examination fee paid is less than the amount due for excess claims, and an amendment is subsequently made to reduce the claims of the Canadian patent application such that the amount paid suffices (i.e. is equal or greater than the fee due), the Request for Examination fee will be considered paid on the day of amendment. To our knowledge, no specific deadline for making such amendment is provided as of yet.
Conditional Notice of Allowance
Currently, if an Applicant has proven substantive validity of a patent application in Canada but the Examiner identifies minor defects in the application, the Applicant will receive a further Office Action to which a formal Response must be submitted. The proposed amendments to the Patent Rules would further introduce a “Conditional Notice of Allowance” which would, at the discretion of the Examiner, limit the necessity of further Office Actions or Responses where only minor defects remain to be addressed in a Canadian patent application before proceeding to allowance.
In responding to a Conditional Notice of Allowance, an Applicant would need to address the defects detected by the Examiner with amendments and/or arguments, which would be submitted together with payment of final fee (including excess fees, if applicable). The deadline for responding to a Conditional Notice of Allowance would be set at four months of such notice, after which the application would proceed to grant. Importantly, the only amendments which would be allowable after Conditional Notice of Allowance would be those requisitioned by the Examiner.
Request for Continued Examination
Currently, the number of Office Actions issued to Applicants in Canada are not limited in number, with Examiners only issuing Final Actions in rare cases to cease examination where the same objections have been levied following Applicant arguments (i.e. there exists an impasse between the Applicant and Examiner). The proposed amendments to the Patent Rules would introduce Request for Continued Examination proceedings. Thus, in Canada, an Applicant would be allowed three Office Actions or a Notice of Allowance, whichever comes first, before substantive examination ceases. Thereafter, should the Applicant wish to pursue the Canadian patent application, a Request for Continued Examination would need be filed together with a fee of $816 (halved for Small Entities), within four months of receiving notification of cessation of examination.
After submitting a Request for Continued Examination, the Applicant would be allowed two further Office Actions or a Notice of Allowance, whichever comes first, before examination ceases again. Under the proposed amendments, there is no limit on the number of further Requests for Continued Examination which can be submitted, provided the same fee is paid within the same time limit.
A failure to request continued examination within four months of the examination ceasing would result in deemed abandonment of the Canadian patent application. Nonetheless, a 12-month reinstatement period would remain available to Applicants, wherein a Request for Continued Examination and the applicable fees can be submitted.
Request for Continued Examination would thus replace the current procedure of withdrawal of an application from allowance (to return to examination) but with the same timelines applicable. Request for Continued Examination would set aside the Notice of Allowance or Conditional Notice of Allowance, as the case may be, and examination would resume.
The proposed amendments to the Patent Rules would further allow Examiners to withdraw a Notice of Allowance or a Conditional Notice of Allowance prior to issue, if there exist reasonable grounds to believe non-compliance with the Patent Act or Patent Rules. Such withdrawal would be available to the Examiner even if the Applicant already responded to a Conditional Notice of Allowance in good faith. In any case, the Applicant will be informed of the withdrawal and the final fee will be refunded.
In a similar vein, the proposed amendments would remove the possibility of amendment after Notice of Allowance or Conditional Notice of Allowance, as the case may be, unless it is obvious that something else was intended in the application, that nothing other than the proposed amendments was intended, and such amendment is filed on or before the date on which the final fee is paid.
Whilst various objections to the proposed amendments were raised by interested parties during consultation, we suspect that the CIPO will drive the quick implementation thereof, particularly considering the large number of Requests for Examination to be made in the near future due to the reduction of time for deferred examination (now due four years from the effective filing date if filed after October 30, 2019, as per recent amendments). We thus expect the proposed amendments to be registered later this year or early in 2022.
As the proposed excess claim fees are payable first at Request for Examination, Applicants will have an opportunity to reduce claim numbers by way of Voluntary Amendment prior to submitting a Request for Examination. Where suitable, drafting claims in the alternative may prove valuable to Applicants. Applicants may wish to consider filing one or more divisional applications at this stage, however, Canada’s strict obviousness-type double patenting requirements must be kept in mind to the effect that in some instances, “forcing” a unity objection may be preferable.
The introduction of the Conditional Notice of Allowance will certainly be beneficial to Applicants in reducing prosecution time. Nonetheless, as withdrawal thereof remains possible at the discretion of the Examiner, it remains to be seen what the true benefit to Applicants will be. Applicants should also take care to restrict amendments and/or arguments submitted in response to those minor defects requisitioned by an Examiner to avoid withdrawal.
The CIPO estimates that a Request for Continued Examination would be submitted for 17.6% of patent applications.Once the proposed amendments take effect, Applicants who are cost-sensitive should be conscious of the three Office Action limit from the early stages of prosecution, particularly considering that no option for Appeal or other After Final Consideration mechanisms are available to Applicants under the proposed amendments. In this regard, whilst the Request for Examination proceedings proposed are in some manner similar to those available to Applicants in the United States, important distinctions remain. In addition to the aforementioned, the filing of Continuation Applications will not be available under the proposed amendments, nor will the option of U.S.-style Terminal Disclaimers be available to Applicants. This will prove particularly challenging in light of Canada’s strict obviousness-type double patenting doctrine and it is likely that unless changes to the proposed amendments are presented, it will be left to the courts to develop this area of Canadian patent practice.
Patent term adjustment are also not yet introduced with the current proposed amendments but can be expected to be implemented by January 1, 2025, in order to meet Canada’s obligations under CUSMA. Once introduced, such adjustments will apply to any application filed on or after December 1, 2020.
According to the proposed Transitional Provisions, excess claim fees and cessation of examination after a third Office Action necessitating the need for a Request for Continued Examination, will not be applicable if, before the 30th day after the day on which the Patent Rules are registered, a Request for Examination is made together with payment of the fee and late fees, if applicable. Therefore, we will notify our clients of the upcoming deadline in due course and advise, on a case-by-case basis, whether or not prior filing of a Request for Examination would be beneficial, should and when the proposed amendments come into effect.
Although the proposed amendments to the Patent Rules arguably bring about administrative and financial burdens on Applicants in Canada, one should appreciate that the objective is to reduce patent pendency by firstly, encouraging Applicants to submit succinct patent applications in conformity with Canadian patent practice and secondly, introducing mechanisms with which Examiners can dispose of long-pending applications. Accordingly, strategies which align with this objective are likely to be successful.
Other amendments to the Patent Rules are also proposed, including amendments to adopt the PCT sequence listing standard and others related to translations and fees, which you can view here.
Should you have any questions or concerns, please feel free to contact us.
Although the above information is believed to be accurate, it is provided without liability for general information purposes only, and should not be relied on as a substitute for proper professional advice.
By: Kimberley Conroy, Technical Advisor – Patents