Canadian Patent Examination
Significant fee increases will be effective at the Canadian Intellectual Property Office (“CIPO”) on October 3, 2022 related to excess claims (claims over 20) and the number of examination reports it issues during prosecution. These changes may negatively impact the breadth of patent protection an applicant could pursue in Canada and will likely also require additional care in strategic filing choices during patent examination. Prior to October 3, 2022, applicants should consider requesting examination for pending applications in order to minimize the impact of these fees (the fee increase will not apply to patent applications for which a request for examination is filed prior to October 3, 2022).
CIPO’s Rule Changes & their Implications
As part of the implementation of the United States-Mexico-Canada Agreement (“USMCA”), CIPO has amended the Patent Rules to streamline patent prosecution and reduce delays. Currently, CIPO does not charge excess claim fees, nor does it limit the number of Examination Reports that can be issued during patent prosecution. Under the new rules, excess claim fees (which will be $100 CAD) will be due for each claim over 20. Additionally, CIPO is limiting the number of examination reports that may be issued. For the first examination fee, an applicant will be able to receive three examination reports. After that, the applicant will need to file a Request for Examination (“RCE”) which will provide two further examination reports.
The implementation of excess claim fees is particularly notable due to its potential to impact on the breadth of claims issuing in a patent family. Like the U.S., Canadian patent practice forbids obviousness-type double patenting — the issuance of two or more patents with claims that, while not identical, are not patentably distinct from each other. In the U.S., a rejection for obviousness-type double patenting can be overcome by filing a terminal disclaimer, which disclaims any patent term in excess of the earlier (“reference”) patent. CIPO’s rules and regulations do not allow for terminal disclaimers. Thus, if claims (often in a Divisional filing within the same patent family) are rejected for obviousness-type double patenting at CIPO, the claims cannot issue absent a showing that the claims are not obvious variants.
Under the current patent rules at CIPO, applicants will often file all possible claims of interest in the first Canadian patent application to avoid the obviousness-type double patenting trap within a patent family. This can lead to patent applications having claim sets with hundreds of claims. In some instances, the examiner will examine all claims. In other instances, the examiner will identify multiple, distinct inventions within the claim set and issue a restriction requirement requiring the applicant to restrict the claims to one invention. If future divisionals are filed claiming unclaimed subject matter from the parent application and CIPO rejects those claims for obviousness-type double patenting, then the applicant can rely on CIPO’s prior restriction requirement to refute the examiner’s argument that the claims are not distinct inventions.
The upcoming CIPO implementation of excess claim fees means that using the above strategy will become significantly more expensive. For example, a claim set with 100 claims would now cost $8,000 CAD. However, failure to include all potential claims of interest in the first Canadian application due to the excess claim fees could result in the applicant losing the strongest possible defense to an obviousness-type double patenting rejection when pursuing some or all of the unclaimed claims in a divisional application.
Recommendation to Patent Applicants in CIPO
In order to avoid having to choose between excess claim fees and breadth of claims, applicants should consider requesting examination on their pending Canadian patent applications prior to October 3, 2022. Further, applicants may want to consider entering national stage in Canada (with a simultaneous request for examination) prior to the statutory 30 month national stage deadline if such deadline falls after October 3, 2022.
Goodwin Procter’s patent professionals welcome any questions on this topic, and are happy to address your specific circumstances for further strategic advice and recommendations. Feel free to contact your Goodwin patent advisor, or any of the authors noted below for more information and inquiries.