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Amendments to the Patent Rules Coming into Force October 3, 2022

Rules amending the Canadian Patent Rules were recently registered on June 2, 2022. The amendments will largely come into force on October 3, 2022.

The most significant changes include the introduction of excess claims fees and requests for continued examination. These changes apply to patent applications for which a request for examination is filed on or after October 3, 2022.

For applicable patent applications, excess claims fees are payable at the time of filing a request for examination and/or when the final fee is paid. Each claim in excess of 20 that is included in the application at any time during the period between the request for examination and the payment of the final fee is relevant in the calculation of the excess claims fees. Any excess claims fees that were not paid with the request for examination will be due at the time of payment of the final fee. This means that if the number of claims in an application is in excess of 20 at any point during prosecution of the application, excess claims fees apply on each of those excess claims even if the number of claims in the application is 20 at the time of filing a request for examination and at the time of paying the final fee. Each excess claim over 20 is CAD $100, or CAD $50 if the applicant qualifies as a small entity under the Patent Rules.

Also for applicable patent applications, the amendment introduces the requirement of filing a request for continued examination along with a prescribed fee to respond to a third office action, and every second office action thereafter. The fee for each request for continued examination is CAD $816, or CAD $408 if the applicant qualifies as a small entity.

See the full text of the Rules Amending the Patent Rules here.

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