Patent Rules

Proposed amendments to the Patent Rules are published for consultation in the Canada Gazette to address patent term adjustment and other changes to streamline prosecution. The proposed amendments include excess claim fees, limits on office actions and requests for continued examination, updating rules on sequence listings and some miscellaneous amendments.

According to the regulatory impact statement the changes to prosecution procedures are being introduced to address the required Patent Term Adjustment (PTA) required as part of NAFTA 2.0/CUSMA:

The PTA obligation in CUSMA is designed to offset potential negative impacts to the applicant of delays in the granting process. CUSMA requires that when there are unreasonable delays in the granting of a patent, the applicant must be compensated with time added to the statutory 20-year term of the patent. Because of the applicant-driven nature of Canada’s patent regime, the introduction of the PTA into the current Canadian patent framework, without further amendments to the regime, could induce undesirable results. For example, some applicants may delay examination in ways that could lead to PTA compensation.

The most significant change to prosecution practice would put limits on the number of office actions:

In the proposed process, a request for examination (RE) would entitle the applicant to receive a maximum of three examination reports or a notice of allowance (NOA), whichever comes first. At this point, examination would cease. Applicants who elect to continue examination after examination has ceased may do so by making a request for continued examination (RCE) and paying a prescribed fee.

Excess claim fees for more than 20 claims would apply to more than 20 claims payable when requesting examination and for claims added during prosecution, when paying the final fee.