Canada’s New Practice on Title Surcharges

On October 3, 2022, the Canadian patent system underwent the biggest change in 20 years. The new Patent Law of 2022 aims to simplify patent examination and thereby lay the foundation for future patent term adjustments implemented in Canada under the Canada-U.S. Trade Agreement.

Title surcharges under the new law

The new patent law stipulates that the additional fee for claims exceeding 20 claims is CAD 100 for each claim. Sole rights and subordination will also incur fees, and subordination containing multiple subordination will not incur additional fees.

The claim surcharge is paid when a substantive examination request is made. If the number of claims increases, the claim surcharge will be paid again after the patent is authorized, and will be paid based on the maximum number of actively revised claims submitted after entering the substantive examination. .

Enforcement considerations for reducing the number of claims

Broad claims can help exclude others from entering the area protected by the claim. However, narrower claims are easier to enforce and more cost-effective. Since Canada does not have a mechanism for claim amendment at the outset of a post-grant challenge, claims to specific commercial embodiments are particularly important.

When to reduce the number of claims

A patent applicant may reduce the number of claims while submitting a request for substantive examination. According to the provisions of Canadian patent law, Canada must submit a request for substantive examination within 4 years from the filing date at the latest. If the request for substantive examination is postponed until the fourth year, the patent applicant can gain more time to consider the corresponding foreign litigation and business strategies and developments to ensure that important features are incorporated or retained in the Canadian claims.

If a patent applicant wants to postpone substantive examination, he or she can use any of the following methods:

• Late payment of fees. The payment of substantive examination fees, including the payment of title surcharges, can be deferred within a certain period of time until the payment notice issued by CIPO is received, and late payment fees must be paid at the same time.
• Use the recovery period wisely. If the fee is not paid within the time limit for the payment notice issued by CIPO, the patent application will be deemed to be abandoned. However, a request for restoration of rights may be made within 6 months from the issuance date of the notice of deemed abandonment. However, it should be noted that accelerated review cannot be requested after rights are restored.
• The applicant can simply delete the claim to avoid further claim surcharges, but submitting a deleted claim does not preclude the submission of new claim amendments to optimize the claims in the future.

Claim surcharge is not the first factor to consider

While claim surcharges will significantly change the patent examination process in Canada, removing claims simply to avoid high claim surcharges should not be a priority for applicants. Reducing the number of claims is balanced against patent duplication and enforcement issues. Claim excess fees should be accepted when the claims strengthen the patentee's ownership position.