Government of Canada Publishes Proposed Amendments to the Patent Rules for Consultation

On July 3, 2021, the Government of Canada (the Government) published proposed amendments to the Patent Rules for public consultation.  According to the regulatory impact analysis statement, the proposed amendments are part of the implementation of Canada’s patent term adjustment (PTA) obligation under the Canada-United States-Mexico Agreement (CUSMA).

CUSMA requires that when there are unreasonable delays in the granting of a patent, the applicant must be compensated with time added to the statutory 20-year term of the patent.  The Government states that the introduction of PTA to Canada’s current “applicant-driven” patent regime could produce “undesirable results”, such as applicants delaying examination to obtain PTA compensation.

The proposed amendments are intended to streamline patent examination, reduce patent pendency, and avoid unreasonable delays.  The main proposed changes include:

• Limiting examination to a maximum of three examination reports.  Applicants will have to file a Request for Continued Examination (RCE) and pay a prescribed fee to continue examination after the third examination report.
• Limiting the number of claims that would be examined for the base fee for examination.  Applications with more than 20 claims will be subject to additional fees for each excess claim over 20 at the time of the request for examination and upon paying the final fee.
• Introducing a new office action called a Conditional Notice of Allowance (CNOA).  A CNOA would inform the applicant that the application is in condition for allowance, but certain minor defects in the application must be addressed.  Upon addressing the defects and paying the final fee, the patent would be granted.

The proposed amendments are open for consultation until August 3, 2021, and details on how to participate can be found here.

Summary By: Michelle Noonan