Consider requesting the review of your Canadian patent applications now to avoid potential fees
Last summer, the Government of Canada released draft regulations introducing claims fees and a continuous examination regime for Canadian patent applications. The proposed rules were published for public consultation in July 2021 (see Canada Gazette Part I), the first step in patent regulation in Canada. The second and final step for the finalization and publication of the rules is expected before this summer and will likely be sooner.
This article presents the proposed changes to the Patent rules and provides applicants with advice on possible actions they may consider taking now to avoid potential charges under the new rules.
The proposed rules aim to reduce the wait for patent applications and streamline the examination process for the Canada-United States-Mexico Agreement (CUSMA), which replaced the North American Free Trade Agreement. American (NAFTA). Effective January 1, 2025, CUSMA requires Canada to grant a patent term adjustment for the Patent Office delay for all applications filed on or after December 1, 2020.
Here is a summary of the proposed new rules:
The proposal is to introduce a fee of $ 100 CAD for each complaint over 20, the fees being calculated when the examination is requested and when the request is accepted. For example, if there are 22 claims when the review is requested, an excess claim fee of $ 200 is payable at that time. If there are then 25 claims when the claim is successful, an additional excess claim fee of $ 300 is payable with the issuance fee.
- Continuous review requests
The proposed Continuing Review Program requires a Continuing Review Request (RCE) and payment of a fee of CAN $ 816 to continue the review and respond to the Examiner’s Third Report, as well as every second report. reviewer thereafter.
Timeline and implications for applicants
If the changes are made, the final rules will be published in Canada Gazette Part II, taking into account public comments on the draft rules. While the exact time is not certain, it is reasonable to expect that the final rules will be in effect in Canada no later than July 1, 2022, and likely will be sooner (the proposed rule set includes changes implementing the new WIPO Standard ST.26 for Biological Sequence Listing, which must be in place by that date).
It is important to note that the draft rules contain a legacy provision that the complaint fee and the ongoing review fee would not apply to any application for which a review is requested within 30 days of the news being registered. rules.
However, since registration can take place up to a week or two before the final rules are released, there may be very little notice of this proposed 30-day window of opportunity.
Weigh the odds: request a review now or later under the new rules
Based on current information, candidates may consider requesting a review now, to avoid potential excess claim fees and ongoing review fees.
Asking for a review now can provide some certainty. A possible downside is that, if the proposed rules are delayed, unenacted, or unenacted in their current form, the applicant would have incurred the costs of requesting review before it was needed and reduced the likelihood that the outcome of the reviews. foreign prosecutions are available to streamline prosecutions in Canada once the substantive examination begins. In the ordinary course, the request for examination is due four years from the filing date in Canada (PCT) if the filing date is on or after October 30, 2019, and five years from the filing date. if it is before October 30, 2019.
Finally, even if the proposed rules enter into force in their present form before the review is requested, an applicant would have the option of avoiding payment of claim fees by amending the request to reduce the number of claims to 20 before. or at the time of the examination request.
We will provide a detailed update when the final rules are released.
