Significant amendments to Canada’s Patent Rules
Excess Claims Fees
Under current practice in Canada there are no excess claim fees.
As of October 3, 2022, on applications where the request for examination submitted on or after October 3, 2022, excess claims fees will be assessed at the time of filing a request for examination and then again upon payment of the final fee. The fee amount due as part of the final fee is based on the maximum number of claims in the application at any point during the period from the request for examination to the day the final fee is paid.
The excess claim fees are currently set at $100 Cdn ($50 Cdn for a small entity) for each claim in excess of 20.
Limits on the Number of Office Actions
Under current Canadian practice there is no limit to the number of Office Actions before allowance of a patent application.
After October 3, 2022, a maximum of three office actions which will be issued after submitting a request for examination after October 3, 2022. To continue examination after the third office action, the applicant will need to submit a Request for Continued Examination and pay the prescribed fee of $816 Cdn ($408 Cdn for a small entity). After filing a Request for Continued Examination a maximum of two office actions will be issued. If application still not allowed, to continue examination after the second office action, the applicant will need to submit a further Request for Continued Examination and pay the prescribed fee of $816 Cdn ($408 Cdn for a small entity).
Conditional Notice of Allowance
Under the amendments, the Patent Office may issue a Conditional Notice of Allowance indicating that the application is in condition for allowance subject to correction of minor defects on payment of the final fee. Identification of what will be considered a minor defect is being prepared by the Patent Office.
Withdrawal of Notice of Allowance or Conditional Notice of Allowance
If the applicant intends to make amendments after allowance, the applicant will need to request withdrawal of the Notice of Allowance and submit a Request for Continued Examination together with the prescribed fee.
PCT Sequence Listing Standard
For Canadian Patent Applications having a filing date of July 1, 2022, sequence listings must be in WIPO Standard ST. 26. This means sequence listings must be in XML format.