Patent Rules

Amendments to the Patent Rules have been registered and will come into force on July 1st for amendments related to sequence listings, and October 3, 2022 for other amendments to “streamline examination’, including excess claim fees and requests for continued examination. The changes will include a $100 per claim fee for applications with more than 20 claims (see new section 80), and a fee for continued examination after three office actions equal to the original examination fee (see section 85.1). The amendments also add steps such as ‘notices of conditional allowance’.

The changes (PDF link of the amendments as registered) followed publication of proposed amendments for consultation last summer (see earlier post).

Changes directed to streamlining prosecution are intended to assist with the implementation of patent term adjustment as part of the CUSCMA. As part of the consultation document:

The Government of Canada intends to make changes to Canada’s IP system to ratify CUSMA. Article¬†20.44 of CUSMA requires that each of the parties (Canada, United States and Mexico) provide PTA in their respective jurisdictions by adjusting the term of a patent to compensate for unreasonable delays in the issuance of the patent in their jurisdiction.

Some of the other changes in this package include:

  • extension of time for incorrect fee payments as a result of erroneous information provided by CIPO,
  • waivers for extensions of time to respond to examination reports when there are significant delays in the delivery of communications from the Patent Office (the Office), and
  • the ability to correct errors in translation of certain documents provided to CIPO.