Patent Pending in Canada? Do This Now to Avoid Higher Costs Later. - JD Supra

Canada is considering changes to its Patent Rules that could significantly increase costs to patent applicants whose applications are waiting for review by the Canadian Intellectual Property Office (CIPO). However, in many cases, applicants can avoid those costs if they act now.

When it comes to allowing patent applicants to defer and/or reduce costs, Canada’s patent system has been very favorable to applicants. Canadian patent applicants can often defer payment of examination fees for up to four years, and there is no limit on the number of claims that a single patent application can file for the basic filing fee. Canadian patent applications also can receive an unlimited number of office actions without having to pay additional fees. In comparison, U.S. patent applicants must: (1) pay the examination fee at the time of filing; (2) pay extra for any claims over 20; and (3) if the second Office Action is a rejection, (in most cases) pay a fee to request continued examination.

Canada’s system will change significantly when the country’s new Patent Rules come into effect, which is expected in late spring or early summer 2022. Under the proposal:

• The CIPO will levy an additional fee on patent applications with more than 20 claims: (1) at the time of the request for examination (“RE”); and (2) at payment of the issue fee (only for additional claims that exceed the number presented at the time of RE). This fee (which is proposed as $100 CAD per claim over 20) will apply to new applications and currently pending applications for which examination requests have not yet been filed.
• Applicants will need to file a Request for Continued Examination and pay a fee (proposed as $816 CAD) to continue examination after a third rejection, and every second rejection thereafter.

The fees proposed above will be reduced by 50% for small entities. In addition, the amounts and rules are subject to change since the proposal is not yet final.

To reduce the financial impact of the expected fees, businesses and individuals with patent applications pending in Canada should immediately:

• Review all applications for which an examination request is not yet filed. For any applications that have over 20 claims, consider requesting examination now.
• If considering adding claims to a pending patent application, do it now before the extra claim fees take effect.

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Patent Pending in Canada? Do This Now to Avoid Higher Costs Later. - JD Supra
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