Changes coming to patent examination in Canada

On July 3, Canada’s federal government published proposed amendments to Canada’s Patent Rules aimed at streamlining the patent examination process in Canada to avoid unreasonable/unnecessary prosecution delays. The amendments are proposed in response to the patent term adjustment obligations under the Canada-United States-Mexico Agreement (CUSMA)¹.

What you need to know

The proposed amendments to Canada’s Patent Rules are not yet law and open for comments for 30 days (starting from July 3, 2021). We highlight a few key proposed changes below:

• Request for continued examination (RCE): This would be a new requirement/mechanism in the Canadian patent regime. Under the proposed prosecution process, examination would cease after three Office Actions (i.e., when an applicant has not received a notice of allowance before the issuance of a third Office Action). To continue to prosecute the application, the applicant must request continued examination and pay a fee (C$816 is currently proposed) for a maximum of two additional Office Actions. At this point, iterative RCEs can be filed to repeat the process.
• If an applicant fails to file an RCE within four months of the last Office Action, the application would be deemed abandoned, with a 12-month reinstatement period.
• An RCE would also replace the current mechanism to return an allowed application to examination.

• Fees for excess claims: Another concept that the proposed amendments introduce to the Canadian patent regime is excess claims fees. The request for examination fee and the final fee for patent grant would be amended to introduce a new component for each claim (C$100 is currently proposed) in excess of 20 claims. The excess claims fees would apply at the following points of prosecution:
• request for examination: for each claim in excess of 20 claims; and
• final fee payment for each claim in excess of the greater of
  • 20 claims on the notice of allowance date, and
  • the sum of 20 claims plus the number of excess claims for which a fee was paid at the time of request for examination.

• Conditional notice of allowance (CNOA): Also new to the Canadian patent regime, a CNOA would be issued at the Patent Office’s discretion to inform an applicant that an application is in condition for allowance, subject to the correction of certain minor defects. If the applicant addresses such defects and pays the final fee, the application would proceed to grant.
• PCT sequence listing: In addition, amendments to the Patent Cooperation Treaty (PCT) Regulations were proposed in October 2020. These proposed changes relate to the new WIPO standard ST.26 for the presentation of sequence listings and are expected to be adopted at the next General Assembly in October 2021. In anticipation of changes to the PCT Regulations, “PCT sequence listing standard” in Canada’s Patent Rules would be replaced with a reference to the new standard set out in WIPO Standard ST.26.

What’s next

These proposed amendments will generally align Canada’s prosecution process with some foreign and international practices. While certain new prosecution elements introduced by the proposed amendments impose additional administrative and financial burdens on applicants in Canada, they are intended as motivation for applicants to file compact applications and faster disposal of applications. CNOA would be a welcomed addition to the Canadian prosecution process, which would reduce the number of communications between the Patent Office and applicants, and thus prosecution time. If these proposed amendments become law, we recommend consulting with a patent agent prior to requesting examination in order to address excess claims fees, and during prosecution to discuss a possible RCE(s).

The proposed amendments are in draft form. Stakeholders are encouraged to provide comments during the 30-day comment period, beginning on the date of publication of the draft rules on July 3, 2021. Once the amendments are finalized and registered, most amendments would come into force within 30 days of registration. The amendments related to PCT sequence listing are expected to into force on January 1, 2022.

_________________________

¹ Read our previous publication on patent term adjustment here.

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

© 2024 by Torys LLP.

All rights reserved.