Proposed Changes to Canadian Patent Examination Seek to Motivate Focussed Prosecution

Stemming mainly from its obligations under the Canada-United States-Mexico Agreement (CUSMA) the Canadian federal government has notified amendments to the Patent Rules that it seeks to implement.

The gazetted notification notes that CUSMA requires each party to avoid unreasonable or unnecessary delays in the granting of patents. It then states that the efficient processing of an application is a shared responsibility between the CIPO and the applicant and that there must be sufficient motivation for all parties to conclude examination in a timely manner. This rationale has led to several notable proposed changes:

Excess Claim Fees
Currently the request for examination fee and the final fee are independent of the number of claims. It is proposed that both of these fees would be subject to excess claim fees for each fee in excess of 20. In the case of the final fee, the number of excess claims will be the greater of (i) the number of excess claims at acceptance or (ii) the number of excess claims when examination was requested. The proposed fee for each excess claim is CAD $100 for large entities or CAD $50 for small entities. Most major patenting jurisdictions have some form of excess claims fee (and/or excess page fee) as a way of encouraging fewer claims and more uniform patent application sizes. By having excess claim fees due at both the request for examination and acceptance stages the addition of claims during the examination process will also be discouraged.

Request for Continued Examination
Currently there is no limit on the number of Office Actions that can issue and applicants have four months from each Office Action either to remedy the matter objected to or raise arguments for why the application is in compliance with the Act and Rules. It is proposed to replace that system with an examination system whereby standard examination would be limited to three Office Actions, with applicants having to request continued examination (RCE) beyond that. The proposed fee for RCE is CAD $816 for large entities or CAD $408 for small entities and would allow up to two further Office Actions, after which a further RCE would be required to maintain the application if there are outstanding objections. The proposed RCE system is similar to the USPTO’s RCE system and from an applicant’s point of view has advantages over the examination systems in jurisdictions such as the United Kingdom, Australia and New Zealand, which have strict deadlines in which applications need to be in order for acceptance.

Conditional Notice of Allowance
With a view to reducing the number of Office Actions required it is proposed to introduce a Conditional Notice of Allowance (CNOA) as an Office Action. The issuance of a CNOA would be at the discretion of the Commissioner and would be limited to situations where only minor formalities type defects stand between an application being ready for acceptance. The proposed CNOA will effectively be a two-for-one Office Action that enables applicants to address such minor defects without having to make a RCE and pay the associated fee.

Commencement
Given the underlying rationale and closer alignment with practices of other IPO’s the proposed amendments are likely to be implemented, although it is not yet clear when that will occur or if different commencement dates will apply. However, one of the other amendments relates to the standard for the presentation of sequence listings and is required to be implemented for PCT compliance by 1st January 2022.

Author: Quinn Miller

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