Amendments to Canada’s Patent Rules are coming into force on October 3, 2022
The long-awaited amendments to the Patent Rules have now been registered, and a coming-into-force date of October 3, 2022 has now been set.
There are two substantive changes to the Rules that will surely be of interest to patent applicants:
1) Excess claims fees will be applicable for each claim over 20. The fees will be payable at the time of requesting examination, and supplemental fees will be required when paying the final issue fee for any further claims added during prosecution. The official fees will be CA$100 for each claim over 20.
2) A request for continued examination (RCE) will be required if the application has not been allowed after three Examiner’s Reports (ERs); further RCEs will be required after every two subsequent ERs. The official fees for filing an RCE will be CA$816.
Official fees are at 2022 rates and are subject to change annually.
Note that the above changes will not be applicable on pending applications for which examination has already been requested, or if examination is requested prior to October 3, 2022. Therefore, to avoid these excess claims fees and RCE requirements, applicants should consider filing an early request for examination on applications having large claim sets and/or where doing so would be advantageous, such as in view of prolonged prosecution in counterpart foreign applications.
If examination has not been requested by the above coming-into-force date, an application may be amended during prosecution to avoid the excess claims fees. Details on best practices are forthcoming.
Other changes are expected to be implemented on October 3rd or sooner (i.e. implementation of Sequence Listing Standard ST.26 on July 1, 2022), but the above amendments are likely to be of greater relevance to most applicants.
For further information, please contact Dr. David Barrans (dbarrans@cassanmaclean.com) or Johanna Coutts (jcoutts@cassanmaclean.com) at Cassan Maclean IP Agency Inc.