Changes to the Canadian patent rules – how to avoid paying certain fees in relation to Canadian patent applications

The Canadian Intellectual Property Office has changed its rules relating to patents.

If you own a Canadian patent application where examination has not yet been requested, or if you own a PCT application in the international phase and are interested in proceeding with a Canadian national phase entry, we may be able to help you avoid paying certain fees.

In short, the changed rules introduce:

• an excess claims fee of CAD $100 for each claim in excess of 20; and
• requests for continued examination, including a fee of $816 CAD.

These changes come into effect on 3 October 2022.

Excess Claims Fees

As mentioned above, the changes to the rules will introduce an excess claims fee of CAD $100 for each claim in excess of 20. These fees, if required, are payable at the time of the examination request.

The excess claims fees are not payable if examination is requested before 3 October 2022. If this is done, this will bring forward the costs of requesting examination, but will avoid the costs of the excess claims fees.

Request for Continued Examination

After issuance of a third office action, in order to continue examination, the applicant will be required to make a request for continued examination (RCE) and to pay a fee of $816 CAD within four months of the date of the last office action.

The new RCE rules do not apply to applications in which examination is requested before 3 October 2022. If this is done, this will bring forward the costs of requesting examination, but will avoid the costs associated with RCEs (if any) in the future.

Please contact us if you wish to request examination on your Canadian patent application (or if you wish to enter a PCT application into the Canadian national phase and request examination) to seek to avoid paying excess claims fees and/or avoid the RCE requirements.

If you have any questions concerning this or would like any further information, please get in touch with your usual contact at Swindell & Pearson Ltd or Sam Wreford at [email protected]