Key elements of the regulatory changes are as follows:
The amendments ensuring Canada meets its international obligations with respect to the Patent Cooperation Treaty (PCT) and the WIPO sequence listing standard (ST.26) will come-into-force on July 1, 2022 .
The amendments streamlining patent examination, and miscellaneous & housekeeping amendments will come-into-force on October 3, 2022 .
How will the amendments apply to applications that are filed before and after the coming-into-force dates?
A new requirement at the time of request for examination (RE) when there are more than 20 claims in the application:
Three report limit after request for examination
A new requirement for the final fee depending on the number of claims presented in the application
Two report limit after request for continued examination (RCE)
RCE to set aside a Notice of Allowance (NOA) or Conditional Notice of Allowance (CNOA) and continue examination
The regulatory changes are published in Canada Gazette, Part II.
Chapters of CIPO's Manual of Patent Office Practice (MOPOP) that relate to sequence listings will be updated on June 30th, 2022 , and a pre-publication is available for review. A summary of these MOPOP changes will also be published.
Future updates to MOPOP will reflect the changes effective October 3, 2022 . Join Patent Branch's mailing list to receive notification of these and other updates.
Will the cost for the examination of an application for a patent increase ?
The basic fee for requesting examination has changed from $407.18 to $408 for a small entity and from $814.37 to $816 for a standard entity.
The regulatory amendments will also introduce a reasonable limit on the number of claims that will be examined for the basic fee, while also providing applicants the flexibility to exceed those limits upon payment of an additional fee for each excess claim to be examined.
What fees will change with the implementation of the amendments on October 3, 2022 ?
Note: For applications that have been subject to a search by the Commissioner under the Commissioner's capacity as an International Searching Authority, the basic fee is $204 ($100 for small entities).
If an applicant pays a standard fee and later files a small entity declaration within the time limit to pay the fee, the applicable fee to be paid was the standard fee.
The small entity fee will apply for any fee paid on or after the filing of a small entity declaration.
A sequence listing is a list of biological sequences using controlled vocabulary (i.e. defined terms for certain features). Currently, theses are in the format prescribed by WIPO Standard ST. 25 for the presentation of nucleotide and amino acid sequence listings in patent applications.
If nucleotide/amino acid sequences are disclosed in a patent application, the description must contain a sequence listing.
The PCT sequence listing standard ensures uniformity amongst sequence listings presented in patent applications and clarifies what sequence disclosures are required to be included in a sequence listing and how sequence data must be presented.
Why is a new standard required ?
Certain sequence types that are common today such as nucleotide analogs, D-amino acids, and branched sequences are not covered by the current WIPO ST.25 and therefore are not present in searchable databases that are commonly used by the scientific community and general public.
The new WIPO ST.26 will provide an enhanced data structure in XML (eXtensible Markup Language) format, which will import free text information along with the sequences which not only facilitates automation and data validation processing for intellectual property offices, but provides a more effective disclosure of sequences for use by researchers and improved searches of later patent applications.
What standard will apply to applications filed before July 1, 2022 and on or after July 1, 2022 ?
It is the filing date that will be the reference date that determines if an application falls under WIPO ST.25 or WIPO ST.26 format, not the priority date, if applicable.
For applications with a filing date prior to July 1, 2022 , which includes divisional applications where the parent application was filed prior to July 1, 2022 , a sequence listing may comply with WIPO ST.26 or WIPO ST.25 format.
For applications filed on or after July 1, 2022 , which includes divisional applications where the parent application was filed on or after July 1, 2022 , WIPO ST.26 format will apply.
If an application is filed before July 1, 2022 , but without a sequence listing, in which format should the sequence listing be filed as a late-filed document if examination is requested after July 1, 2022 ?
As the filing date is prior to July 1, 2022 the sequence listing may comply with either WIPO ST.25 or WIPO ST.26 format.
Where can I find more information on WIPO ST.26?
Additional information can be found in the Standard ST.26 (PDF) and WIPO's FAQ on implementation of WIPO ST.26.
Where can I find more information on WIPO sequence listing tools ?
Applicants may use WIPO Sequence Suite software; however, its use is not mandatory. WIPO also offers webinars on WIPO Standards.
If a notice of allowance is sent before October 3, 2022 with a deadline to respond that is on or after October 3, 2022 , will there be an examiner's report limit if the application is returned to examination at the applicant's request before October 3, 2022 ?
There is no examiner's report limit if before October 3, 2022 the applicant requests the notice of allowance be withdrawn and that the application be subject to further examination and pays the prescribed fee. On or after October 3, 2022 the applicant will need to request continued examination and pay the prescribed fee to return the application to examination.
On October 3, 2022 the basic fee portion of the final fee and the fee for each page of the specification and drawings in excess of 100 pages is increasing. If a notice of allowance is sent before October 3, 2022 with a deadline to respond that is on or after October 3, 2022 , what final fee amount will be due?
The fees that are required to be paid are determined based on the date they are paid. If the fees are paid on or after October 3, 2022 , the fees as amended will be required to be paid.
Under the new regulations an applicant will be required to:
Should a small entity declaration be filed in respect of the application at the time of RE, the small entity fees would apply.
Both the basic fee and any applicable excess claim fee, which is referred to collectively as the prescribed fee, are required for the request for examination to be made.
When the total amount paid at the time of RE is less than the prescribed fee as a result of an error in accounting for the excess claim(s), the applicant could either:
In the event that the RE is not made in the prescribed time, in either scenario i) or ii), a late fee may be necessary.
No. CIPO recognizes the need for applicants to pursue their desired scope of protection and flexibility to protect their inventions. Generally larger claim sets require greater examination resources.
Unless it is determined that an overpayment of excess claim fee was made, no refund will be provided.
Under the new regulations applicants will be required to pay the prescribed fee of $100 ($50 for a small entity) for each claim in excess of 20 included in the application at any time during the period beginning on the day after the day on which the request for examination is made and ending on the day on which the final fee is paid, that was not already paid in connection with the RE.
This new requirement is in addition to the existing requirement to pay the basic fee and any applicable page fees. The new requirement applies only to applications with a request for examination on or after October 3, 2022 .
Limits on the number of examiner's reports after request for examination, after request for continued examination, and request for continued examination after allowance or conditional allowance
After a RE is made, an applicant will receive a maximum of three examiner's reports before a RCE is required, unless a notice of allowance or conditional notice of allowance has been sent before the third examiner's report.
Following a compliant request for continued examination, an applicant will receive up to two examiner's reports before another RCE is required. There is no limit to the number of RCEs and the process will continue to loop following every compliant RCE.
Only notices sent under subsections 86(2) and (5) of the Patent Rules are considered in the report limits. These notices are commonly called examiner's report and final action, respectively.
All examiner's reports sent to the applicant count towards the examiner's report limit after RE or RCE however, if an examiner's report is withdrawn the report count will be adjusted. There are no other exceptions to the report limit after RE or RCE. The Office practice for withdrawing reports is defined in MOPOP.
Once an examiner's report limit after RE or RCE is reached, a notification of the requirement to make a RCE and pay of the prescribed fee will be included in the examiner's report. However, should a notification of the requirement to RCE not be included in the examiner's report, a separate notice will be sent to the applicant notifying them of the requirement to make a RCE and pay the prescribed fee.
When there is an outstanding RCE notification, no substantive examination of the application by the examiner will take place until a compliant request for continued examination is made by the applicant. The time limit to RCE is 4 months from the date of notification.
The Office will continue to process maintenance fees, change of agent, requests to record assignments, change of address, change of method of correspondence, protests, written requests to withdraw a report, and requests for reinstatements and enter voluntary amendments.
No. Only the applicant can make a RCE.
To make a RCE, the applicant must submit a request for continued examination and pay the prescribed fee. The time limit to RCE is 4 months of the date of the notice requiring RCE or 4 months after a Notice of Allowance or Conditional Notice of Allowance has been sent.
No. The Commissioner is not authorized to grant extensions of time for RCE.
Following a notice requiring RCE, the consequence of failing to RCE within the 4 month period to respond is the deemed abandonment of the application. The applicant will have 12 months to reinstate the application by making a request for reinstatement, making a RCE, and paying the prescribed fees.
In the instance the application is considered to be abandoned for both the failure to respond to an examination report and to RCE only one fee will be required to reinstate the application.
An applicant can return an application to examination after receiving a NOA or CNOA by making a RCE and paying the prescribed fee. The time limit to RCE is the earlier of 4 months after the date the NOA or CNOA is sent and the day before the day on which the final fee is paid.
New conditional notice of allowance
A CNOA is essentially a combination of an examiner's report and a notice of allowance (NOA). When an application is in a condition for allowance but for certain minor defects, the Commissioner will send a CNOA to the applicant identifying those minor defects. In the CNOA, the Commissioner will require the applicant to make certain amendments or submit arguments as to why the application complies with the Patent Act and Rules, and will require the applicant to pay the final fee.
The types of defects that an applicant can expect in a CNOA are defects such as those relating to margin, line spacing and font size; page numbering; drawing requirements; parts of the application beginning on new pages; and statements incorporating by reference a document in the description. The Manual of Patent Office Practice will include examples of certain minor defects that could be included in a CNOA.
An applicant will have four months from the date the CNOA is sent to amend the application or provide arguments as to why the application does comply with the Patent Act and Patent Rules, and pay the final fee. Failure to respond within that time period or pay the final fee would result in abandonment.
The Commissioner will inform the applicant by notice that the application does not comply with the Patent Act and Patent Rules, that the CNOA is withdrawn and will refund the final fee. Any amendments made from the date the CNOA was sent to the date the CNOA is withdrawn will be considered never to have been made. The examiner will send a report identifying only the defects raised in the CNOA.
The Commissioner will inform the applicant by notice that the application does not comply with the Patent Act and Patent Rules, that the CNOA is withdrawn and will refund the final fee. Any amendments made from the date the CNOA was sent to the date the CNOA is withdrawn will be considered never to have been made. The examiner will send a report identifying only the defects raised in the CNOA.
The Commissioner will inform the applicant by notice that the application does not comply with the Patent Act and Patent Rules, that the CNOA is withdrawn and will refund the final fee. Any amendments made from the date the CNOA was sent to the date the CNOA is withdrawn will be considered never to have been made. The examiner will send a report identifying the defects that were raised in the CNOA and the other defects that were not identified in the CNOA.
After a CNOA is sent, an applicant can make a request for continued examination (RCE) to return the application to examination and have amendments beyond those permitted following CNOA examined. When an applicant makes a RCE and pays the prescribed fee within the earlier of four months after the day on which the CNOA is sent or the day before the day on which the final fee is paid, the CNOA sent to the applicant will be set aside. Any amendments made to the application between the day on which the CNOA is sent and the day on which the CNOA is set aside are considered never to have been made.
The applicant may amend the specification and the drawings of an application to correct obvious errors provided that the amendments are made on or before the day on which the applicant replies in good faith to the CNOA.
Language requirements for applications filed in Canada
All documents or information submitted or made available to the Commissioner or the Canadian Intellectual Property Office must be in English or French, with some exceptions as defined in the Patent Rules. For the exceptions, a translation will also generally be required within a predetermined period.
New translation requirements for Patent Cooperation Treaty (PCT) national phase applications and possibility for corrections after national phase entry
At or before the time that an international application becomes a PCT national phase application in Canada, the applicant must submit to the Commissioner the translations of the following elements or any parts of these elements that are in a language other than English or French:
Certain errors in a translation may be corrected, subject to the Regulations. Both the applicant and CIPO may become aware of errors in a translation after the translation is submitted. If the Commissioner, before a request for examination is made, or an examiner, in the course of examining an application for a patent, has reasonable grounds to believe that a translation contains errors, the Commissioner or examiner must inform the applicant of the error.
If the applicant notices that a translation contains errors, or is informed by the Commissioner or examiner that the translation contains errors, the translation may be corrected, subject to the regulations. An applicant may correct a translation that contains an error by submitting the following:
The correction must be made before the day on which a NOA or a CNOA is sent or, if that notice is withdrawn or set aside, before the day on which a NOA or a CNOA is sent again.
An error in translation is a mistranslation that would have been obvious to a skilled translator fluent in both the original language and the language of translation. Errors in translation may include, but are not limited to, semantic, lexical, morphology, and grammar errors. A failure to provide a complete translation is not considered an error in translation.
If the description, other than any sequence listings, or the claims of the international application are entirely in a language other than English or French, a translation of the element must be submitted as a requirement for national phase entry in Canada. Failure to submit such a translation within the time period to enter national phase will result in the application not entering national phase in Canada.
If elements of the international application are partly in English or French, a translation of the part of the element must be submitted at or before the time the application becomes a PCT national phase application. In these cases, the consequence of failure to provide a translation depends on the element in question.
A new safeguard addresses the situations where erroneous fee information concerning the amount to be paid was provided in writing by the Commissioner. The Commissioner is authorized to extend the period of time for the payment of a fee whether that period has expired or not if the circumstances justify the extension and if certain conditions are met.
No. Erroneous fee information provided by the Commissioner is fee information that is provided in writing, for example information that can be accessed on CIPO's Patent Fees web page, or in a notice sent to an applicant or patentee. If the information on a CIPO's Patent Fees web page or notice is incorrect, and the applicant pays less than what is prescribed because they relied on this information, they can pay the difference after the due date if certain requirements are met.
Schedule 2 of the Patent Rules no longer reflects most current fee amounts, as these must be adjusted in accordance with the Service Fees Act. The current fee amounts are posted on CIPO's Patent Fees web page and reflect annual adjustments made in in accordance with the Service Fees Act.
Any fee paid on or after the filing of a small entity declaration may be paid at the small entity rate. If an applicant pays a standard fee and later files a small entity declaration within the time limit to pay the fee, the applicable fee was the standard fee. Similarly, if a General Authorization Statement (GAS) is used to pay a standard fee, and later, within the time limit to pay the fee, a small entity declaration is filed, the applicable fee was the standard fee. No refunds will be provided if a standard fee was paid, directly or using a GAS, and a small entity declaration is later filed.
If an applicant receives an examiner's report more than one month after the day on which it was sent, the Commissioner is authorized to waive the payment of the fee for requesting an extension of time for replying to an examiner's report, provided certain conditions are met. Those conditions are that the applicant requests an extension within 14 days of receipt of the report, and provides evidence satisfactory to the Commissioner of the delayed receipt, and that the circumstances are justified. The due date to respond will be extended to four months from the established date of receipt, however the due date for response may be extended up to six months after the day on which the report was received based on the circumstances and justifications submitted.
Note that if the examiner's report also includes a requisition under section 85 or 91 of the Patent Rules, or a requirement to request continued examination (RCE) under section 85.1 of the Patent Rules, the time limit to respond to the other requisitions or notice are not subject to the extension. In such circumstances, applicants may wish to request the withdrawal of the examination report instead of an extension of time.