The Canadian Patent Rules were majorly amended by the Canadian Intellectual Property Office (CIPO) on June 2, 2022. The new Patent Rules, which introduce excess claim fees and continued examination proceedings, will come into force on October 3, 2022. Applicants with pending or forthcoming Canadian applications should promptly consider filing a Request for Examination prior to this date, to avoid the procedural and cost implications.
Consider Requesting Examination Early on:
• applications including an extensive claim set;
• applications including claims from multiple corresponding foreign applications (e.g. continuations) that may invoke a Unity Objection in Canada;
• complex matters likely to entail multiple exchanges with the Examiner; and
• divisional applications (pending or to be filed) that may include an extensive claim set or combine new claims.
MRF can otherwise propose measures to amend the claims upon requesting examination after this date so as to minimize or attempt to work around these new provisions. This may include pairing down dependent claims in preview of a forecasted Unity Objection (excess claim fees will not discriminate between dependent and independent claims), introducing multiple dependencies and/or claim features in the alternative, pre-emptively filing divisional applications for patentably distinct subject matter, or other approaches as may become apparent on a case-by-case basis.