Changes to the Canadian patent regime will come into force on October 3, 2022. The most significant changes include the introduction of (i) excess claims fees and (ii) a request for continued examination procedure with related fees.

These changes will not affect currently pending Canadian patent applications for which examination has already been requested. For currently pending Canadian patent applications for which examination has not yet been requested, these new fees can be avoided by filing a request for examination before October 3, 2022.

Excess Claims Fees

Currently, no excess claim fees are payable. For patent applications in which examination is requested on or after October 3, 2022, an excess claim fee of CAD $100[1] per claim in excess of 20 will be payable at the time of requesting examination and/or at the time of paying the final fee.

The fee is based on the number of claims in excess of 20 that is included in an application at any time during the period between the day after the request for examination is made and the day the final fee is paid.

For example:

An application includes 26 claims at filing. A voluntary amendment is filed to reduce the number of claims to 24 before or at the time of filing a request for examination. During examination of the application, in response to a first office action, the applicant replaces the claim set containing 24 claims with a first amended claim set which includes 30 claims. In response to a second office action, the applicant replaces the first amended claim set containing 30 claims with a second amended claim set containing 25 claims. The second amended claim set containing 25 claims is allowed by the examiner.

In this example, an excess claim fee of CAD $400 (4 excess claims) must be paid at the time of requesting examination. An excess claim fee of CAD $600 (10 excess claims based on the greatest number of claims included in the application at any time between requesting examination and paying the final fee – 4 excess claims paid for at the time of requesting examination = 6 excess claims remaining to be paid for) must be paid at the time of paying the final fee.

Unlike the U.S. patent regime in which excess claims fees apply in applications in which more than three independent claims, more than twenty total claims, or a multiple dependent claim are present, the new Canadian regime does not differentiate between independent and dependent claims. Both independent and dependent claims count as one claim. Also, a dependent claim that refers to more than one preceding claim counts as one claim under the new Canadian regime.

Request for Continued Examination

Currently, no additional examination fees are payable after the initial fee is paid at the time of requesting examination. For patent applications in which examination is requested on or after October 3, 2022, applicants will be required to file a request for continued examination and pay the prescribed fee of CAD $816[2] to respond to the third office action, and every second office action thereafter.

Failure to file a request for continued examination and the prescribed fee when required will result in abandonment of the application.

Other Notable Changes

The amendments to the Patent Rules also introduce the following:

• Conditional notice of allowance. If an examiner considers that an application is allowable subject to certain minor defects, then the examiner will issue a conditional notice of allowance. The applicant will have four months to file a response by making those amendments and/or submit arguments, along with payment of the final fee.
• Remedies for delayed receipt of office action caused by the CIPO. The deadline to file a response to an office action is four months from the date of the office action. In the event that the applicant receives an office action more than one month after the date of the office action, the applicant can apply to request for an extension of time of up to six months, without payment, if the applicant (a) applies for the time extension within 14 days after receiving the notice and (b) provides evidence satisfactory to the Commissioner of the date of receipt of the office action.
• Changes to the Format of Sequence Listing. For applications filed on or after July 1, 2022, any sequence listings included in the application must comply with the World Intellectual Property Organization (WIPO) Standard ST 26 (ST.26) format. For applications filed before July 1, 2022, sequence listings may either comply with the ST.26 format or the previous ST.25 format.

[1] This is the standard entity fee. The small entity fee is CAD $50.

[2] This is the standard entity fee. The small entity fee is CAD $408.

A recent news update on our website reported that the Canadian Intellectual Property Office (CIPO) has recently issued a copyright registration where one of the (two) authors named for the work is an artificial intelligence (AI) program. This raises the question of how well (if at all) the Copyright Act[i] (the “Act”) is equipped to deal with non-human authorship of works.

As a starting point, the term “author” is not defined in the Act. However, several provisions in the Act strongly suggest that an author must be a natural person. For example, the Act provides that the term of copyright is the life of the author plus fifty years[ii]. Obviously, where the author is not a natural person, it would be impossible to determine this term. Even in the case of joint authors where only one of the authors is not a natural person (such as in the copyright registration recently issued), problems arise. For works of joint authorship, the term of copyright lasts until fifty years after the last author dies[iii]. Given that software can presumably last indefinitely, perhaps naming an AI program as a co-author would be a creative way to indefinitely extend the length of copyright in a work?

The Federal Court of Appeal has also dealt with this issue, albeit not directly. In P.S. Knight Co. Ltd. v. Canadian Standards Association[iv], the Court was addressing one of the presumptions in the Act (section 34.1.(2)(a)) relating to authorship, namely that if a name purporting to be that of the author is printed in the usual manner, that person would be presumed to be the author. The Court held that the Canadian Standards Association (CSA) was not entitled to the presumption:

“The term “author” is not defined in the Copyright Act, but it undoubtedly refers to a natural person. Copyright subsists for “the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that year”: Copyright Act, s. 6 [emphasis added]. As a corporation, capable of only metaphorical life and death, the CSA cannot benefit from the presumption in paragraph 34.1(1)(a) of the Copyright Act.”

Although the Court was only addressing whether a corporation could be considered an author, it would seem that similar considerations apply to other non-human authors, including an AI program.

Also of importance is the question of subsistence of copyright. The Act provides that copyright subsists in every “original literary, dramatic, musical and artistic work…”[v]. “Original” is not defined in the Act; however, the Supreme Court of Canada has held that an original work must be the product of an author’s exercise of skill and judgment (CCH Canadian Ltd. v. Law Society of Upper Canada[vi]). This is not necessarily a difficult bar to meet. In particular, a work need not be creative in order to qualify for copyright protection. It is an open question as whether an AI program would be able to inject the necessary “skill and judgment” a work for it to qualify for copyright protection. The concept of “judgment” is directly related to one of the objectives of AI – the ability to make decisions in a way that simulates human intelligence. As AI technology progresses, it may be difficult to differentiate between the “judgment” of a human author and that of an AI program.

One further issue has to do with moral rights. The Act provides protection for an author’s moral rights, which relate to, among other things, the author’s right to the integrity of the work. The author’s moral rights are only infringed when certain acts occur (e.g. distortion or mutilation of the work) to the prejudice of the author’s honour or reputation[vii]. For authors that are AI programs, this raises the question of when would an AI program’s honour or reputation be prejudiced? Is it even possible for a software program to have honour or reputation? Corporations are sometimes considered to least have reputations (and perhaps even honour) – it would seem plausible for AI programs to have reputations as well.

In view of some of the issues raised, the Canadian government recently conducted consultations regarding AI and its applicability to the copyright framework. It is likely that amendments to the Act will be necessary in order to adequately accommodate AI into copyright.

[i] R.S.C. 1095, c. C-42

[ii] Section 6, Copyright Act

[iii] Section 9(1), Copyright Act

[iv] 2018 FCA 222

[v] Section 5, Copyright Act

[vi] 2004 SCC 13

[vii] Section 28.2(1), Copyright Act