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.