Patent Rules: Limits, Fees and Sequence Listings

Summary#

This is a proposed set of changes called the Rules Amending the Patent Rules. It would make it harder to drag out patent examination, add fees for large claim sets and for continuing examination, and update how genetic sequence lists must be filed to match international rules. The changes are a proposal from the Canadian Intellectual Property Office (CIPO) and are not law yet.

What it does#

• Limits how long ordinary examination can go:

  • After a request for examination, an application would get up to three examination reports or a notice of allowance. After that, examination stops unless the applicant asks to continue.
  • If the applicant wants to continue, they must file a request for continued examination (RCE) and pay a fee.
  • The standard RCE fee is $816, or $408 for small entities.

• Charges extra for big claim sets:

  • Adds an excess-claims fee of $100 per claim over 20 (or $50 for small entities).
  • That fee applies at the time of the request for examination and again at final fee payment for any additional excess claims not already paid.

• Introduces a Conditional Notice of Allowance:

  • A new notice (CNOA) tells an applicant the application is ready to be allowed but needs a few minor corrections and payment of the final fee. Fixing those items moves the file to grant without more back-and-forth.

• Brings sequence listings into line with international rules:

  • Adopts WIPO Standard ST.26 for nucleotide and amino-acid sequence listings so Canada meets the Patent Cooperation Treaty (PCT) changes.

• Adds several applicant protections and small fixes:

  • A way to correct obvious translation errors in PCT national phase files before allowance.
  • A mechanism to extend time to pay if CIPO gave the wrong fee amount and the applicant underpaid because of that error.
  • A limited waiver where the Commissioner can waive an extension fee if a CIPO delay caused the problem.
  • Various clarifications about correcting names of applicants and inventors.

• Timing of entry:

  • Most changes would come into force on the "30th day after the day on which they are registered."
  • Sections dealing with sequence listing definitions come into force on January 1, 2022 to match the PCT timetable.

Who's affected#

• Patent applicants and patentees. Most of the impact falls on applicants who:
  • File applications with many claims.
  • Need multiple rounds of examination to resolve objections.
• Patent agents and law firms who prepare and prosecute patent applications.
• The Canadian Intellectual Property Office (CIPO) itself, which would collect new fee revenue and spend on implementation and administration.
• Foreign applicants are the largest group affected, since about 87% of applicants seeking patent protection in Canada are foreign.
• Small entities (universities and small businesses) would pay reduced excess-claim and RCE fees, but they still face higher average costs (CIPO estimates an average cost to a small business applicant of about $148 over the planning period).
• Anyone using biotechnology-related patents will need to follow the new WIPO ST.26 format for sequence listings.

If it’s unclear who will be affected in a specific case (for example, multinational companies with complex family filings), the notice does not provide more detail.

Why it matters#

• The Government says these changes help Canada meet its international obligation under CUSMA to avoid “unreasonable delays” in issuing patents. Faster, more predictable processing reduces the chance applicants get extra patent term as compensation for delays.
• The rules aim to encourage shorter, cleaner patent applications and fewer rounds of back-and-forth. That can lower examination time and improve how quickly inventors get clarity on their rights.
• For applicants this means a direct trade-off: you can seek broader protection with many claims, but you may pay more ($100 per extra claim). If you want more examination beyond the set number of reports, you must pay the RCE fee ($816 standard).
• The new sequence-listing and translation rules matter to biotech filers. They must use WIPO ST.26 and provide certain English or French translations to avoid losing parts of their disclosure.
• CIPO estimates the package produces a net present-value benefit of $8.7 million over 10 years, with total monetized benefits of $63.8 million and total costs of $55.1 million. Most fee revenue would come from foreign applicants.
• This is a consultation-stage proposal. Interested parties had the opportunity to comment (the notice invited representations within 30 days of publication). The changes are not yet final.