Canada is proposing a third change to the Patent Rules in as many years. The recently proposed amendments to the Patent Rules will primarily affect the examination process and, as proposed, will not apply to applications on which examination has been requested prior to the coming-into-force date of the proposed amendments.
In view of the proposed rules, if you have an application that is pending and have not yet requested examination, or if you plan to file an application soon, you may wish to request examination early to avoid the restrictions introduced by the proposed rule changes.
Excess Claims Fees
At present there are no fees in Canada for excess claims. The proposed amendments would introduce an excess claim fee for each claim in excess of 20. At present the proposed excess claim fee is $100 per claim. No distinction is made between independent and dependent claims. The excess claims fee is determined twice: when requesting examination; and when paying the final fee.
When requesting examination, the excess claims fee is simply calculated as any claims pending in the application in excess of 20 at the time examination is requested. When paying the final fee, the excess claims fee is calculated as the number of claims allowed in the application in excess of 20 for which excess claims fees were not already paid at the time examination was requested. Thus, the applicant will not have to pay twice if excess claims fees were paid at the time examination was requested.
Excess claims fees are not calculated between requesting examination and payment of the final fee. Accordingly, claims introduced after requesting examination and subsequently removed prior to allowance would not be subject to excess claims fees. This is important to note since the proposed amendments do not introduce a terminal disclaimer, and the issue of double patenting in “voluntary” divisional applications will likely persist.
Request for Continued Examination
At present there is no limit on the number of examination reports that can issue on a case. The proposed amendments would limit the number of examination reports, so that prosecution closes when the third examination report issues. To continue prosecution, the applicant would be required to file a request for continued examination (RCE) and to pay a prescribed fee. At present the proposed prescribed fee for the RCE is $816.
Conditional Notice of Allowance
In view of the proposed limitations on the number of examination reports, the proposed amendments also allow for the issuance of a Conditional Notice of Allowance (CNOA). The CNOA is expected to be used to inform the applicant that the application is in condition for allowance, but that minor defects in the application remain. This allows an Examiner to direct the applicant to correct clerical errors in the application, while avoiding a costly RCE. The CNOA would require that the applicant address the defects and pay the final fee.
Amendments to the PCT Regulations related to new WIPO standard ST.26 for the presentation of sequence listings are expected to be adopted in October 2021, including the implementation date of January 1, 2022. The proposed amendments adopt the new PCT sequence listing standard so that Canada's sequence listing standard remains aligned with the sequence listing standard in the PCT.
Harmonizing the sequence listing requirements with the PCT standards appears to be driving the timing of the registration of the proposed amendments. Accordingly, it is likely that there will be a push to register the proposed amendments prior to January 1, 2022.
However, a number of objections to the proposed rules were raised by the patent profession and others and so it is uncertain if the proposed rules will register as they currently stand. Unfortunately, once the proposed rules do register, the provisions relating to excess claims fees and requests for continued examination will likely come into force within 30 days.
Accordingly, to avoid having the proposed amendments applied to a currently pending or new application, consider filing a request for examination as soon as possible. We will continue to keep you updated as the situation develops.