Changes to the Canadian Patent System

Changes to Canadian Patent Rules

Canadian Patent Office to implement new rules impacting fee structure for excess claims and RCE’s, PCT translations, and WIPO sequence listing standards

Changes to the Canadian Patent rules are set to come into force in October of this year, with changes to sequence listings commonly found in life science-related patents coming into effect earlier at the beginning of July. The incoming rule changes will impact the fee structure of the Canadian patent system that, if not properly considered, could result in consequential added costs to applicants.

The changes will impact the fees in two areas:

1) Excess Claims: there will be a $100 CAD fee for each claim over 20, with the fee being reduced by 50% for small entities. The fee is to be paid with the request for examination and at the time of paying the issue fee. However the excess claim fee only applies if there are additional claims at issuance compared to the initial payment during the request for examination.

2) Requests for continued examination (RCE): the cost of the RCE will be $816 CAD, which can also be reduced by 50% for small entities. The RCE is required to continue examination of the patent application after the third Examiner’s Report and every second Examiner’s report following.

To mitigate the impact of these rule changes there are steps you can take now to minimize unexpected fees once the changes come into force.

For pending cases, before implementation:

• File requests for continued examination.
• File divisional applications requiring a request for examination.
• Add additional claims to trigger unity of invention.
• Enter the National Stage of a PCT application with a request for examination.

After the rule changes, applicants can avoid the excess claim fee by amending the application to reduce the number of claims to 20 when examination is requested.

Additional changes to the patent rules include creating a conditional notice of allowance, increasing the requirement to correct translations in national stage applications, and complying with WIPO sequence listing standards.

The Conditional Notice of allowance will notify when an application is in condition for allowance except for minor defects. The minor defects must be addressed along with the payment of the issue fee, subject to the Examiner’s review. If there is any substantive change or the Examiner no longer considers the application allowable, then the Conditional Notice of Allowance will be withdrawn, issue fee refunded, and examination re-opened pending any RCE requirements.

There will also be a heighted duty on applicants to ensure that PCT application translations are correct at the time of national stage entry. After the changes to the rule, corrections to translations must be submitted with a statement such that “(i) at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation, (ii) the error in the original translation occurred despite due care having been taken in its preparation, and (iii) the request is being made within a reasonable time after the applicant became aware of the error.” Applicants are encouraged to ensure that proper translations are prepared and submitted at the time of Canadian national phase application entry. Further, machine-translations or other low quality translations be avoided to minimize any potential incidents.

Starting July 1, 2022 the Canadian Intellectual Property Office will comply with WIPO standard ST.26 for sequence listings. Transitional applications filed before July 1, 2022 can contain sequence listings in the new ST.26 or the former ST.25 format. The new sequence listing rules will immediately impact non-PCT applications because the Canadian filing date of a PCT application entering the Canadian national phase is the PCT international filing date.