The patent system in Canada has always been distinct and adaptable. However, many of these distinctive features are being phased out in order to bring Canada’s patent law into line with international practice.
One of the benefits of the present Canadian patent law is that applicants can submit as many claims (dependent or independent) as they would like without incurring additional claim costs. This is in contrast to the practice in other countries, such as the United States and Europe, where excess claims fees are commonplace.
Changes coming to patent examination in Canada
Nonetheless, the introduction of excess claims fees is one of the forthcoming amendments to the Canadian patent law. This amendment is being made to comply with Article 20.441 of the Canada-United Stipulates-Mexico Agreement (“CUSMA”), which states, among other things, that patent applications should be processed “in an efficient and timely manner, with the purpose of decreasing unreasonable or unnecessary delays.”
The new Canadian Patent Rules, which are set to take effect in 2022, will impose a $100 surcharge for each claim in excess of 20. These new costs would not apply to applications with less than 20 claims, and applicants would simply have to pay the current rate for a request for examination or the final charge. This strategy will “encourage applicants to file compact application sizes and would discourage the submission of an excessively large number of claims throughout the examination,” according to the Canadian Intellectual Property Office (“CIPO”), reducing patent pendency.
Excess claims fees will be applied at two points in the application process:
- at the time of requesting an examination for each claim in excess of 20 claims; and
- at the time of payment of the final fee, for each claim in excess of the greater of:
- 20 claims on the day the notice of allowance is sent, and
- the sum of 20 claims plus the number of excess claims for which a fee was paid at the time of the request for examination.
Practice Note: Examining a Canadian patent application is not automated, and it can be delayed for up to four years (if the filing date is on or after October 30, 2019) or up to five years (if the filing date is on or after October 30, 2019). (if the filing date is before October 30, 2019). Delaying the assessment of an application in Canada is a typical practice, especially for Applicants who have similar applications in other countries. Applicants often wait for a positive examination result in other jurisdictions before amending the claims in their Canadian patent application. This method frequently minimizes the length of a prosecution, the number of office actions, and the expense of prosecution.
In consideration of the future changes to the Patent Rules, applicants should assess their Canadian patent portfolios and assess the benefits and drawbacks of postponing or obtaining examination before the new Patent Rules take effect for patent applications with more than 20 claims.
You can find the list of Canada IP Firms here.