New Patent Rules Set To Come Into Force On October 3, 2022

On June 2, 2022, the Rules Amending the Patent Rules were registered by Order in Council, and most provisions will come into force on October 3, 2022.   As previously reported by the E-TIPS® Newsletter here, the new Rules are intended to streamline patent examination, reduce patent pendency, and avoid unreasonable delays to assist with the implementation of Canada’s patent term adjustment (PTA) obligation under the Canada-United States-Mexico Agreement (CUSMA).

One of the significant changes includes the introduction of a $100 fee for each claim in excess of 20.  Excess claim fees will be due when examination is requested and at the date of final fee payment.  Specifically, excess claim fees will apply to claims “included in the application at any time during the period beginning on the day after the day on which the request for examination is made.”  Thus, if claims are added after the examination request, then additional excess claim fees will be due at the final fee payment. 

The new Rules will also limit examination to a maximum of three examination reports.  Applicants will have to file a Request for Continued Examination (RCE) and pay a prescribed fee of $816 to continue examination after the third examination report and every second examination report thereafter.

The provisions relating to excess claim fees and RCE apply to any application where examination is requested on or after October 3, 2022.  Therefore, applicants hoping to avoid excess claim fees and RCEs should request examination by September 30, 2022.

Summary By: Michelle Noonan