On October 3, 2022, amendments to Canada’s Patent Rules will come into effect and add excess claim fees to the patent system (amongst other changes). Excess claim fees may be required if a Canadian patent application has more than 20 claims at the time of requesting examination or at any time after the examination is requested starting on or after October 3, 2022.
The Patent Rules have been amended in order to fulfill the requirement for patent term adjustment under the Canada-United States-Mexico Agreement (CUSMA). The addition of excess claims fees is one amendment. The goal is to discourage applicants from submitting an excessive number of claims and, as a result, shorten the time needed for the examination. With the revisions, there will be a price for every claim that is more than 20 at any moment, from seeking examination to paying the final fee.
The introduction of excess claims fees is problematic not only because of the additional costs that innovators will incur but also because certain aspects of Canadian patent law and practice restrict the options for pursuing the related subject matter in divisional applications, necessitating the inclusion of numerous claims in an application to sufficiently protect desired and potentially desirable subject matter.
What Are the Excess Claim Fees?
The cost of an excess claim is $100 (or $50 if the patent applicant is considered a “small entity”) per excess claim. Both when requesting an examination and when paying the final fee after the Patent Office has approved the patent application, these fees are imposed.
If the patent application included more than 20 claims at any point after the examination was requested, excess claim fees could also be owed when paying the final fee (and taking into account any excess claim fees that were paid when the examination was requested).
Excess Claim Fees: How Can You Avoid Them?
The new excess claim fees will not be charged to your Canadian patent application if you seek an examination of it on or before September 29, 2022.
Additionally, if you seek examination of your Canadian patent application on or after October 3, 2022, you may still avoid paying excess claim fees by making sure that your application only has 20 claims when you request examination and at any other time after that.
Perhaps it is time for legislators and the Canadian Patent Office to examine double patenting practice and legislation as Canada implements changes to its patent law to comply with its international obligations. Otherwise, it may have unintended effects on the quality and worth of the gained patent protection. Furthermore, strategies like those mentioned above are probably a result of the need to restrict claim fees for substantial claim sets. The patent office and the patentee may incur more costs and administrative work as a result of these unexpected outcomes, which might undermine efforts to simplify prosecution.
You can see a list of Canada IP firms here.