Amendments to the Canadian Patent Act Rules

In 2022, CIPO will officially implement the revised patent law rules on July 1, and will introduce excess fees and continued examination procedures (RCE: Request for Continued Examination). It is expected that the Canadian Patent Office's patent examination will be Significant impact. This amendment aims to simplify the patent examination procedure, speed up the examination and avoid unnecessary examination delays.

Specific revisions include:

(1) Increase excess fees
When the application documents exceed 20 claims, an excess fee of CAD 100 will be added for each item. In addition, if there are more than 20 claims when paying the final fee for authorization, a fee of CAD$100 will be charged for each of the more than 20 claims. For example, if the number of claims when requesting substantive examination is 30 and the number of claims when paying the final fee is 35, the claim surcharge when the applicant requests substantive examination is: (30 claims-20 claims) *100 = 1,000 Canadian dollars; and the excess fee when authorizing is: (35 claims-20 claims) * 100 = 1,500 Canadian dollars.
However, multiple dependent claims are not included in the number of claims.

(2) Introducing the Request for Continued Examination (RCE: Request for Continued Examination)
Continued examination proceedings (RCE) are a means of resolving the final status of a rejection by filing a request for continued examination in the same application. The RCE system already exists in U.S. patent law. If the CIPO examiner still finds defects in the patent application after issuing OA three times, the examination will be stopped. If the applicant wishes to continue the examination, he or she needs to submit a request for continued examination (RCE) in response to the third OA. The cost of RCE is CAD $816.
If the applicant does not submit an RCE request within 4 months after the issuance of the final OA, the application will be deemed abandoned, but the applicant can request to restore the rights within 12 months from the issuance date of the final OA.

In order to avoid incurring excess fees and RCE fees, it is necessary for the applicant to submit a request for substantive examination before the amendments to the Patent Law Rules come into effect.

In addition, other amendments expected to be implemented on July 1, 2022 are:

(1) Conditional Notice of Allowance: CNOA
This is a new feature of the Canadian patent system. CNOA is issued at the discretion of the Patent Office, notifying the applicant that the patent application can be authorized on the condition that some specific minor defects are corrected. If the applicant corrects these deficiencies and pays the final fee, the application will proceed to the authorization stage.

(2) Ways to change sequence listings <br>From July 1, 2022, all sequence listings included in patent applications must comply with WIPO standard ST.26. Due to this change in the PCT Implementing Regulations, the "PCT Sequence Listing Standard" in the Canadian Patent Law Regulations will be replaced by the new standard specified in the WIPO Standard ST.26.
A sequence listing contains the nucleotide sequence or amino acid sequence disclosed in the patent application, forms part of the descriptive description, and contains descriptive information about each sequence.

[Editor’s note: The revision of the patent law details has not yet been officially announced, and the content may be modified or the effective date may be postponed in the future]