On October 3, 2022, the majority of the amendments introduced by the Rules Amending the Patent Rules on June 2, 2022, came into force and effect. The amendments aim to streamline the patent examination process and bring Canada in line with the patent term adjustment regime as required by the Canada-United States-Mexico Agreement (“CUSMA”; known in the U.S. as “USMCA”).

The following is a summary of some of the key changes introduced by the revised Patent Rules.

Excess Claim Fee

As of October 3,^, 2022, excess claim fees will apply to requests for examination of patent applications with more than 20 claims. The excess claim fee is CAD $100 (CAD $50 for small entities^[1]) for each claim over 20. This amendment is consistent with other patent offices, such as the United States Patent and Trademark Office (“USPTO”) and European Patent Office (“EPO”) which have a maximum of 20 and 15 claims respectively before excess claim fees are payable.

The new fee is intended to encourage the filing of more compact patent applications resulting in more timely processing.

The excess claim fee is calculated based on the greatest number of claims pending in the application at any time starting from the date examination is requested and ending on the date the final fee is paid. The excess claim fees are calculated and payable at two points in the application process: first, when examination is requested, and second, when the final fee (i.e., issue fee) is paid.

Patent applications that have 20 claims or fewer at all times between the request for examination and payment of the final fee will not be subject to the excess claim fee.

To avoid or minimize excess claim fees applicants can:

• file a voluntary amendment at any time prior to or together with the request for examination reducing the number of claims in an application; and/or
• include alternatives within a claim and/or dependent claims that refer to more than one preceding claim as these count as a single claim for the purposes of calculating the excess claim fee.^[2]

Conditional Notice of Allowance

A Conditional Notice of Allowance (“CNOA”) is a notice that says the patent will be allowed, provided that minor defects in the application are resolved. Prior to the amendments, there was no CNOA procedure in Canada.

Now, an Examiner can issue a CNOA to an applicant when they have “reasonable grounds to believe that, but for certain minor defects, an application would comply with the Act and these Rules.” The CNOA essentially means that the application will be found allowable if minor defects are addressed (see the Manual of Patent Office Practice (“MOPOP”) s. 25.01.01 for examples of minor defects that could be included in a CNOA).

The applicant must make the amendments or submit arguments and pay the final fee no later than four months after the date the CNOA was sent.

However, the Examiner can withdraw a CNOA:

• after it is sent but before a patent is issued, if the Examiner has reasonable grounds to believe the application does not comply due to defects other than those referred to in the notice; or
• after the applicant replies in good faith by the deadline, if the Examiner has reasonable grounds to believe the application still does not comply in respect of those defects.

In both cases, the Examiner must notify the applicant and refund the final fee (if paid).

Request for Continued Examination

Prior to these amendments coming into force, patent applicants could be issued numerous Non-Final office actions before being issued a Notice of Allowance or a Final Action. However, the changes to the Patent Rules introduce a limit of three examiner’s notices. Upon the issuance of the third examiner’s notice, examination will cease until a Request for Continued Examination (“RCE”) is filed. For applications which requested examination on or after October 3, 2022, once the third notice is issued, the applicant must file an RCE and pay a fee of CAD $816 (CAD $408 for small entities) for examination to continue.

The deadline for filing an RCE is no later than four months of the date of the third notice.

An RCE entitles an applicant to two additional examination reports (to bring the application into compliance) or to receive a Notice of Allowance. If the application requires more than two additional examination reports, the RCE process described above repeats, including the obligation to pay the fee.

Conclusion

The Canadian Intellectual Property Office (“CIPO”) has already updated the MOPOP in accordance with the October 2022 amendments. The MOPOP revision history can be accessed here.

The author would like to acknowledge the support and assistance of Renée Taillieu, articling student at law.

[1] Section 112(2) of the Patent Rules defines a small entity as one that employs 50 or fewer employees or that is a university. This definition does not include: (i) an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or (ii) an entity that has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees. The determination of small entity applies to the applicant at the filing date of the application.

[2] Sections 80(1.1) and 87(1.1) of the Patent Rules.