Photo by Markus Winkler (Unsplash)

Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Since the summer of 2020, the Canadian federal government has been looking for ways to decrease the needless delays and unwanted wait times present in the patent process under the Patent Rules. This search to streamline the patent prosecution procedure is to help Canada meet its obligations under the Patent Cooperation Treaty and Canada-United States-Mexico Agreement (CUSMA). On July 3, 2021, the government proposed amendments, with excess claim fees sticking out to many legal professionals across the country.

The amendments impose the excess claim fees at two steps in the process of submitting a patent application:

(i) at the time of a [request] for each claim in excess of 20 claims; and

(ii) at the time of payment of the final fee, for each claim in excess of the greater of:

(a) 20 claims on the date the notice of allowance is sent, and

(b) the sum of 20 claims plus the number of excess claims for which a fee was paid at the time of the [request]

In the Regulatory Impact Analysis Statement, put out by Canada Gazette, the government states that applicants will be encouraged to limit their files with the new fees. This limitation reduces the burden of the Canadian Intellectual Property Office (CIPO) by limiting the number of claims that must be reviewed and likely reducing the number of errors, edits, and comments that the applicants must amend. With these fees, and the hope that applicants abide by the rules, CIPO can reduce the time it takes for an application to be processed.

The current proposal is a standard fee of $100 to be administered for each excess claim over 20, with a fee of $50 for smaller entities. There is no set time when these amendments will come into effect, but Smart & Biggar’s Partner David Schwartz states that it will be no later than July 1, 2022.

Currently, legal professionals wage the debate of whether to request an examination of an application now or later under the new amendments. It seems that some have already found a way to get around the excess fees. David Schwartz elaborates: "… [A]n applicant would have the opportunity to avoid the payment of claim fees by amending the application to reduce the number of claims to 20 before or at the time of requesting examination."

However, some firms are still encouraging applicants to consider avoiding the excess fees by requesting examination before the new amendments come into play: “Where applicants have more than 20 claims in applications for which examination has not yet been requested, we strongly encourage considering requesting examination before this period has lapsed.”

It will be interesting to see the impact of the new amendments on the queue of applications. Regardless, with the push to avoid the excess claims , it seems that CIPO will have a busy start to the new year.