UPCOMING CHANGES TO PATENT RULES: REQUESTING EXAMINATION AND EXCESS CLAIMS FEES

The Canadian Patent Office (CIPO) has proposed changes to the process of requesting examination of patent applications in Canada, and it is expected that these changes will soon be implemented.  Of note, the proposal includes introducing excess claims fees for each claim in excess of 20 claims (regardless of claim type).  Excess claims fees will be payable at the time of requesting examination.  Additional excess claims fees may also be payable when paying the final (issue) fee, if the number of claims at allowance is greater than the number of claims at the time of requesting examination.

At this time, the proposed amendments have yet to be finalized, pending further consultations between the profession and CIPO.  However, once the finalized version is approved, they will likely come into force very quickly thereafter (likely early 2022). 

We will keep you updated on the developments as they unfold.  While there is uncertainty as whether the proposed changes will apply to pending applications, or to applications already under examination, it is possible that requesting examination prior to coming into force of the amended Patent Rules could result in cost savings. Therefore, you may wish to consider requesting examination as soon as possible, in the event that such could avoid these excess claims fees.

For more information, please contact David Barrans or Johanna Coutts at Cassan Maclean IP Agency Inc.