Amendments to the Canadian Patent Rules: Things to Consider before October 3, 2022 Written by: Andrea Moores & Angela Keuling Long anticipated amendments to the Patent Rules were recently announced, with the significant changes coming into force on October 3, 2022. The changes support Canada’s obligations under the Canada-United States-Mexico Agreement (CUSMA) and aim to streamline examination and reduce avoidable delays. Here we highlight some notable changes and the potential impacts. Excess Claim Fees For applications in which examination is requested on or after October 3, 2022, each claim over 20 will be subject to an excess claim fee of $100 CAD (or $50 for a “small entity” applicant). This fee will be calculated: first at the time examination is requested, and again after allowance when the final fee is paid to account for any excess claims added after requesting examination. Thus, the excess claim fees are only payable once for each claim over 20. If insufficient claim fees are paid at the request for examination, the remaining fees must be paid or a voluntary amendment filed to reduce the claims. If an amendment reducing the number of claims is filed after requesting examination, without having paid excess claim fees due, the examination fee is not considered paid until the date of the amendment. Importantly, the excess claim fees will apply if more than 20 claims are present in a Canadian application at any time from the day after the request for examination is made until payment of the final fee after allowance. For example, if excess claims are added at some time after requesting examination but then removed before allowance, then excess claim fees for those removed claims would still be owed with the final fee. The amended regulations confirm that multiply dependent claims count as a single claim with respect to the calculation of excess claim fees. Request for Continuing Examination For applications in which examination is requested on or after October 3, 2022, a request for continuing examination (RCE) and payment of a fee will be required once the third Examiner’s Report has been issued and for every second Examiner’s Report thereafter. The RCE fee will be $816 CAD ($408 for a small entity) due 4 months from the date of notice that the RCE is required, and this deadline cannot be extended. Conditional Notice of Allowance Effective October 3, 2022, when only minor defects need to be resolved for a patent application to comply with the Patent Act and Patent Rules, a conditional notice of allowance (NOA) can be issued. A good faith response, with either amendments addressing the defects or arguments against them, and payment of the final fee is due four months after the date of the conditional NOA. If the Examiner is not convinced the response overcomes the defects, the conditional NOA may be withdrawn. In the case of a withdrawn conditional NOA, any amendments made from the date the conditional NOA was sent to the date of its withdrawal are considered never to have been made. Continued Examination after Allowance An Applicant may request continued examination and pay the associated fee after a notice of allowance (NOA) or conditional NOA has been issued. The request and fee must be submitted by the earlier of four months after the day the NOA or conditional NOA was sent and payment of the final fee. Continued examination would, for example, allow the Applicant to submit voluntary amendments to add claims or correct errors. Obvious errors in the application may still be corrected without requesting continued examination. Transitional Provisions The new fees for excess claims and requests for continued examination do not apply to applications if, before October 3, 2022, a request for examination is made and all applicable prescribed fees under the current Patent Rules are paid. Considerations ahead of October 3, 2022 Since the transitional provisions provide that excess claim fees and request for continued examination do not apply to applications where examination has been requested and the prescribed fee(s) paid prior to October 3, 2022, there may be cost-saving benefits to requesting examination before this date, particularly where an Applicant is interested in potentially pursuing more than 20 claims in Canada. For example, it is generally recommended in Canada to initially pursue all related claims in a single application and only file a divisional application when a lack of unity objection has been raised (due to Canadian law concerning double patenting). If an Applicant is potentially interested in including multiple claim sets in a Canadian application, then requesting examination prior to October 3, 2022, could result in substantial cost savings. However, requesting early examination may reduce opportunities to leverage prosecution activities of corresponding applications in other jurisdictions and may also remove the ability to pursue the Patent Prosecution Highway (PPH). Overall, this could result in additional Examiner’s Reports being issued and additional response expenses or continued examination fees incurred. In deciding when to request examination, Applicants should consider not only the number of claims but also other factors relating to their prosecution strategy and commercial interests. For applications where examination is requested on or after October 3, 2022, care should also be taken with respect to excess claims from the time examination is requested to the time the final fee is paid. If the claims as filed exceed 20, the tradeoff of reducing the claim set – and possibly claim scope – prior to requesting examination to save on excess claim fees should be evaluated. A similar evaluation should be done when making claim amendments during prosecution. Conclusion The amended Patent Rules aim to motivate applicants to file more concise applications and expedite prosecution. While the introduction of excess claim fees and continued examination may make it enticing to request examination on pending applications, it may not be the best option in all cases, making it important to carefully consider the potential impact of these decisions on your overall patent strategy. If you would like more information, including on other upcoming amendments to the Patent Rules, one of our Intellectual Property Group members would be happy to discus