New Rules Impacting Canadian Patent Application Costs This Fall
On October 3, 2022, several patent application changes will come into effect in Canada as a result of recent amendments to Canada’s Patent Rules. The amendments contain a number of provisions aimed at changing applicant behaviour in an effort to streamline examination before the Canadian Intellectual Property Office (CIPO) and also introduce several (potential) new fees to the application process. One of the most noteworthy new fees involves new fees for excessive claims.
Excess Claim Fees
Today, there are no fees for the number of claims within a patent application in Canada. This will change in October, when the number of claims will be evaluated twice against a maximum threshold of 20. First, when examination is requested, CAD $100 will be payable for each claim in excess of 20. Second, at the time of payment of the final fee, applicants must pay CAD $100 for each claim in excess of 20 which were included in the application at any time between requesting examination and paying the final fee, and that were not paid for at the time of requesting examination. Small entities will be charged CAD $50.
Claims Are Counted Throughout The Prosecution Process
While the fees are evaluated at examination and time of payment of final fees, the count of claims are tracked throughout the prosecution process. If your claim count exceeds 20 during the prosecution process, you will be liable for the excess, even if your claim count returns to 20 when the final fees are due.
Applications Already in Process
Applicants with pending applications can avoid the new excess claims fees by requesting and paying for examination prior to October 3rd.
Additional Changes to Canadian Rules
There are a number of additional changes which will take effect as a result of the amendments, including a new Request for Continued Examination (“RCE”) process. We will cover these additional changes in an upcoming post. You can find the details on all of the upcoming changes on the Canadian Patent Office website here.
Disclaimer
This post is strictly informational and is not intended to be, and should not be relied upon as legal advice. Please consult a patent attorney for specific advice regarding any intellectual property matters.
