Canada’s government has initiated plans to implement a patent term adjustment regime required by the Canada-United States-Mexico Agreement (CUSMA). Rule changes come into effect on October 3, 2022. These are amendments to the Canadian Patent Rules and introduce changes to patent prosecution in Canadian courts, led by the Canadian Intellectual Property Office (“CIPO”).
The most significant rule changes affect excess claim fees and continued examination practice. Although the deadline for requesting examination in Canada in the ordinary course is four years from the filing date for applications filed on or after October 30, 2019, and five years from the filing date for applications filed before this date, the changes to the Canadian Patent Rules may provide a unique situation to request examination early.
Excess Claim Fees
Until the change, CIPO imposed no fees based on the number of claims in a Canadian patent application. However, starting on October 3, 2022, the amendments to the Canadian Patent Rules will impose a fee of $100 CAD (about $78 USD) for each claim over 20 claims. The calculation of excess claim fees will be based on the greatest number of claims pending in the application at any time, beginning on the date examination is requested and ending on the date the final fee is paid.
Strategy considerations
Before October 3, 2022
- If you have a pending case for which you have not yet requested an examination, consider requesting an examination so you fall under the old rules.
- Suppose you have something pending in the PCT phase. There, you may want to consider early entry to the Canadian national phase before the rules change with a simultaneous request for examination.
- If you have a US provisional application or US utility application pending, consider filing a direct Canadian national phase application before October 3, 2022, that claims priority to the US application, along with a simultaneous request for examination.
- If a lack of unity has been raised during prosecution and you are considering filing a divisional application(s), file the divisional application(s) with a simultaneous request for examination.
On or after October 3, 2022
- Reduce claim numbers by filing a voluntary amendment before or with the request for examination.
- Take advantage of multiple dependent claims, which are counted as single claims.
Request for Continued Examination
Under current rules, there is no limit to the number of office actions issued before receipt of an allowance or a final office action. With the new regulations on October 3, 2022, there will be a new continued examination practice for the CIPO akin to the continued examination practice used within the U.S. Patent and Trademark Office (“USPTO”). Specifically, a request for continued examination and payment of a prescribed fee will be required to respond to a third office action and every second subsequent office action thereafter. This fee will be $816 CAD, with a 50% reduction for small entities.
Strategy considerations
Before October 3, 2022
- If you have a pending case for which you have not yet requested an examination, consider requesting an examination so you fall under the old rules. Similar to the above, if you have something pending in the PCT phase. There, you may want to consider early entry to the Canadian national phase before the rules change with a simultaneous request for examination.
- If you have a US provisional application or US utility application pending, consider filing a direct Canadian national phase application before October 3, 2022, that claims priority to the US application, along with a simultaneous request for examination.
- If a lack of unity has been raised during prosecution and you are considering filing a divisional application(s), file the divisional application(s) with a simultaneous request for examination.
On or after October 3, 2022
- Consider including more than one independent claim to maintain safe options for potential divisional applications to avoid double patenting.
- Request examination under the Patent Prosecution Highway.
- Delay the request for examination until claims are allowed/granted in a corresponding foreign application. After that, file an amendment with the request for examination to conform the claims to the allowed/granted foreign claims.
- Should additional time be required to respond to an office action while awaiting the conclusion of foreign counterpart prosecution, consider not replying to the office action by the due date, and reinstate the application within 12 months of the due date by filing a response to the office action and paying the prescribed fee.
- Consider requesting withdrawal of an office action if it contains obvious Examiner errors or if it is sent late by the Canadian Intellectual Property Office.
Additional Changes
Conditional Notice of Allowance: There will be a new Conditional Notice of Allowance identifying minor defects for correction with the final fee payment. This is akin to practice around notification of intent to grant in practice before the European Patent Office (“EPO”).
Reopening Prosecution After a Notice of Allowance: Under current rules, an applicant can request withdrawal of the notice of allowance with payment of a prescribed fee to reopen prosecution and file additional amendments. After October 3, 2022, receiving a notice of allowance or a conditional notice of allowance, the new Patent Rules will require filing a request for continued examination and payment of a prescribed fee, which reopens prosecution to permit filing an amendment.
Sequence Listings: Amended rules will require that Canadian patent applications having a filing date on or after July 1, 2022, provide sequence listings in compliance with WIPO sequence listing standard ST. 26. Transitional provisions permit patent applications having a filing date before July 1, 2022, to contain a sequence listing in either the new WIPO sequence listing standard ST.26 or the previous ST.25 format. Because the Canadian filing date of a PCT application entering the Canadian national phase is the PCT international filing date, the new sequence listing rules will immediately impact non-PCT applications.
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The information provided is intended to highlight selected upcoming changes affecting the filing and prosecution of Canadian applications. It is not an in-depth analysis of all aspects of the new Patent Rules. If you have questions or wish to discuss the new Rules and how they may impact your portfolio, please contact us, and we can discuss them further.
We work with outstanding Canadian counsel, including the team at Aird & McBurney LP (https://www.airdberlis.com/), on intellectual property matters for our clients seeking protection of these rights in Canada. We are happy to bring them into any discussion on this or other questions regarding intellectual property rights in Canada. In addition, we thank Dr. Kimberly McManus at Aird & McBurney LP for her input on these rule changes.