Limits on Patent Examination and Fees

Summary#

These are the final Rules Amending the Patent Rules (SOR/2022-120). They change how patent examination, some fees, and sequence listings are handled in Canada. Most changes take effect October 3, 2022, while the new sequence-listing format takes effect July 1, 2022.

What it does#

• Limits how long ordinary examination can continue before an applicant must pay to keep going:
  • After a first request for examination an application can get up to 3 examination reports. To continue after that, an applicant must file a request for continued examination (RCE) and pay the fee ($816 standard; $408 for a small entity).
  • After an RCE an application can get up to 2 more examination reports before another RCE is needed, or the application may be deemed abandoned.
• Introduces an excess‑claim fee to discourage very large claim sets:
  • $100 per claim (standard) or $50 per claim (small entity) for each claim in excess of 20. This can be charged at the time of the request for examination and again at the final fee stage for claims added later.
• Adds a new “conditional notice of allowance” (CNOA):
  • CNOA tells an applicant the application is in condition for allowance subject to small, specified fixes and payment of the final fee (final fee basic: $306 standard; $153 small entity; plus $6.12 per page over 100).
• Brings Canada’s sequence listing rules in line with the international standard:
  • Adopts WIPO Standard ST.26 (the PCT sequence listing standard) for nucleotide and amino‑acid sequence filings. This part comes into force July 1, 2022.
  • Adds translation and language rules for parts of PCT national phase applications (what must be in English or French).
• Adds several procedural safeguards and housekeeping changes:
  • Power to extend fee deadlines when CIPO (the Canadian Intellectual Property Office) gave erroneous fee information and the applicant paid the wrong amount.
  • More flexibility to correct translation errors in certain international application elements before allowance.
  • Clarifications on corrections to applicant/inventor names, refunds, abandonment and reinstatement rules, and other technical fixes.

Who's affected#

• Patent applicants and patentees — both Canadian and foreign. (CIPO estimates a large share of filings come from foreign applicants; the rules and fees are expected to affect those who file many claims or who prolong examination.)
• Patent agents and law firms that prepare and prosecute patent applications in Canada.
• Biotech and life‑sciences applicants who file sequence listings — they must use ST.26 format by July 1, 2022.
• Small entities (universities and businesses with 50 or fewer employees) — they pay reduced fees for RCEs and excess claims.
• Canadian Intellectual Property Office will operate under the new rules and collect the new fees.

Why it matters#

• Money and strategy: If you file many claims or want to keep fighting an application through many rounds of examination, you may pay more. The rules are designed to encourage shorter, more focused claim sets and faster prosecution.
• Time to grant: The changes aim to reduce how long some applications stay pending. That can matter for business planning, licensing, investment, and market clearance.
• Biotech filing format: Labs and companies that include genetic or protein sequences must switch to the ST.26 electronic format by July 1, 2022, or follow transitional provisions.
• Small entities: Fee reductions for qualifying small entities mean the rules try to soften the impact on smaller filers, but some will still see higher costs if they use many claims or repeatedly continue examination.
• Practical risk: If applicants do not follow the new timing and fee rules (for example, failing to file an RCE or pay required fees), an application can be deemed abandoned and rights may be lost — though the rules include some new ways to fix certain errors or get extensions in limited situations.

If you want help checking how these changes affect a particular application or filing plan, a patent agent or lawyer can explain the fee and timing choices in your case.