Canada | Excess claim fee introduced in Canadian Patent Laws

On 2nd June, 2022, Canadian Minister of Industry notified amendments to Patent Rules. Formulated under the Canada-United States-Mexico Agreement (CUSMA), the recent amendments made to the Patent Rule eases out the proceedings and allow applicants to avoid unnecessary delays in application of a patent.

 

Key Amendments:

  • With the amendment of Rule 1, the definition of ‘Presentation date’ now excludes the ‘presentation date’ of category 2 application mentioned in sub-section 186(2).
  • Erroneous information by applicant:

If the Commissioner is provided with any erroneous information, he may extend the period of payment of fee mentioned in Schedule II and III. Upon finding the source of such information the applicant files for extension or in case of insufficient payments, such extensions are allowed by Commissioner with new sub-rule (4) under Rule 3.

  • Excess claim fee introduced:

Payable in two given situations, with the modification in Schedule II of the Rule, fee paid for each claim of 20 is $100 (CAD). In case of Small entity fee, each claim is paid at $50 (CAD). This fee is payable at-

  1. the time of examination of an application for a patent.
  2. the time final settlement of the application for a patent.
  • Excess claim Fees is newly introduced concept in Canada to allow applicants to claim in limited numbers and allows the applicants to mitigate against such costs.
  • Request for Continued Examination (RCE):

In case of defects caused in the application of a patent, the examiner may issue a notice to comply with the Rules/Acts and submit arguments in not less than four months after such notice. Similarly, as per Rule 86, in case of rejection of application, the examiner may call for ‘Final Action’ If “three” such notices are sent to the applicant already, the examiner may, under new Rule 85 (1), inform the applicant the need to request  for a ‘continued examination’. A prescribed fee of $816 (CAD) has to be paid along with such request for examination.

  • The ‘continued examination’ may be subsequently extended, if previous two notices fail to be served accordingly.
  • Final Fee:

With the modification Rule 87(1), the final fee for a patent is-

    1. for small entity- $153 (CAD)
    2. for others- $306 (CAD)
  • After the implementation of new rules, no amendments will be applicable on after the notice of allowance or conditional notice of allowance. In case of obvious errors under Rule 100(2) the exceptional amendment will be allowed. The drawings which are set aside by the Commissioner, any amendments made to the application during that period from beginning of that till the end of that day will stand unamended.
  • Refund of Fees: Only those fee which are paid under subsection 85(1)(3) are allowed for refund.

*Shubhi Srivastava, Editorial Assistant has reported this brief.

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