Canada Gazette, Part I, Volume 155, Number 27: Rules Amending the Patent Rules

July 3, 2021

Statutory authority
Patent Act

Sponsoring department
Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Executive summary

Issues

Efficient processing of a patent application, with a view towards concluding examination, is a shared responsibility between CIPO and the applicant. For this reason, there must be sufficient motivation for all parties to conclude examination. In Canada, applicants have a significant influence over the duration of the examination of patent applications, since they control the contents of the application. Canada's patent regime, when compared to that of other jurisdictions, provides CIPO with fewer and more limited levers to suspend or terminate examination and to compel applicants to make their applications compliant with the Patent Act and the Patent Rules within a set time frame. Prior to the applicability of the PTA, the impact of delays in the granting of patents mainly affected the patentee in a negative way by reducing the effective term of the patent.

The PTA obligation in CUSMA is designed to offset potential negative impacts to the applicant of delays in the granting process. 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. Because of the applicant-driven nature of Canada's patent regime, the introduction of the PTA into the current Canadian patent framework, without further amendments to the regime, could induce undesirable results. For example, some applicants may delay examination in ways that could lead to PTA compensation. Further, patent examination quality and patent validity may decrease from a pressure to grant patents within artificial time frames that do not account for the varying complexity of patent applications.

The current patent framework and process were not designed in view of the PTA and require updates that are responsive to this new obligation. Currently, the Patent Rules do not contain sufficient measures to reliably influence the duration of examination by encouraging applicants to file applications that are compliant with the Canadian patent system, to address known defects as soon as possible and to ensure the timely and efficient processing of patent applications, by applicants.

In relation to patent pendency and examination reports, the current regulatory framework does not contain an effective mechanism to ensure that prosecution of the application is concluded in a timely manner. This can manifest itself in prolonged exchanges between CIPO and patent applicants, which take the form of written reports and responses. The average number of reports per allowance in fiscal year (FY) 2019–2020 was 1.7 reports; however, the maximum number was 15. A future patent system that compensates applicants for delays must have reasonable limits in place. It is typically in the interest of the Office, the applicant and the public that patent prosecution is concluded in an efficient and timely manner; however, with the introduction of patent term adjustment, not all applicants would retain this interest. Long patent pendency through prolonged prosecution increases the risk of unreasonable delays and increases marketplace uncertainty during the period of time when the availability of patent rights is uncertain.

Canadian patent applications have on average a higher number of claims than patent applications in other jurisdictions. This can be attributed to the fact that there is currently no control for the number of claims in a patent application in Canada. Because the claims define the scope of protection sought, patent examiners spend a disproportionate amount of time analyzing the claims over other portions of the specifications. There is an inherent link between the number of claims in an application and the time required for an examiner to analyze an application.

CIPO has observed that applications with larger claim sets tend to result in prolonged and more inefficient examination. Without excess claims fees, applicants are not sufficiently encouraged to limit the number of claims in patent applications to a reasonable number that is optimized to be processed efficiently. Currently, applicants are encouraged to take advantage of the fact that there are no excess claims fees in Canada by filing large claim sets. Applicants are exploiting flexibilities in the Canadian system that are not available in other jurisdictions and, in view of the new PTA obligation, are no longer desired in Canada.

Amendments to the PCT

On January 1, 2022, the current Patent Rules will no longer conform to new requirements of the PCT Regulations in respect of sequence listings. A sequence listing is a part of the description of patent application related to biotechnology that gives a detailed disclosure of the nucleotide and/or amino acid sequences. Amendments are required to Canada's regulation to ensure it meets the requirements of the PCT. Further, Canada will need to also include new regulatory requirements to ensure that submissions under the new requirements also conform to the official language requirements (French or English) for patent applications in Canada. These changes must be in place in Canada before January 1, 2022, for Canada to remain in compliance with the PCT while ensuring that these new requirements also meet Canada's official language obligations.

Background

CIPO is a special operating agency of Innovation, Science and Economic Development Canada (ISED) and is responsible for the administration and processing of the greater part of intellectual property in Canada. CIPO's mission extends beyond delivering services directly to those seeking intellectual property (IP) rights and includes

• (1) providing greater certainty in the marketplace through high-quality and timely IP rights;
• (2) fostering and supporting invention and creativity through knowledge sharing;
• (3) raising awareness of IP to encourage innovators to better exploit it;
• (4) helping businesses compete globally through international cooperation and the promotion of Canada's IP interests; and
• (5) administering Canada's IP system and the Patent Office efficiently and effectively.

CIPO funds its operations on a cost-recovery basis from revenues it generates through fees paid by clients for IP services such as the examination of patent applications. Therefore, fees must recover the costs of the associated activities in order to adequately fund and support CIPO's operations. The organization is guided by the principle of financial neutrality in establishing new fees. Neutrality is considered in the context of the total revenue and costs of the organization and not necessarily on the basis of financial neutrality for individual services offered. CIPO has used activity-based costing extensively for the past 10 years to evaluate the relationship between costs, activities, products and services in order to manage its business strategically.

Examination process

In Canada, a patent currently grants the patentee the exclusive rights to make, use or sell the claimed invention for 20 years from the filing date of the application in exchange for a full public disclosure of the invention. To be granted a patent, an applicant must submit an application disclosing the invention to CIPO, pay the prescribed fees and make a formal request for examination. Once a request for examination has been made, the application is examined by a patent examiner to determine whether the application is compliant with the Patent Act and the Patent Rules. After a request for examination is made, a patent application may be either voluntarily abandoned or withdrawn, allowed or refused.

The current Canadian patent framework establishes that an applicant is entitled to a patent when their application complies with the statutory requirements. Consequently, the examination process is aimed at establishing whether the application is compliant and, when defects are identified, providing the applicant with an opportunity to comply. When an examiner identifies defects in an application, the applicant is notified in an examination report. There is no limit on the overall duration of patent examination, which helps to ensure that a thorough patent examination is conducted and only high-quality patents are granted.

A large percentage of applications require more than a single examination report before they are determined to be allowable. The examination process is typically iterative and involves a number of examination reports and applicant responses. In FY2018–2019, 8% of patent applications were granted without an examination report being required. Of the patents that required an examination report before grant, 47% required one report, 27% required two reports, 10% required three reports and 6% required four or more reports. In that same year, 99.5% of granted patents were issued by the sixth report. There is no limit in the current Patent Rules for the number of examination reports that CIPO may have to issue.

The time to examine an application can vary greatly and is dependent on a number of factors, including the quality of patent application drafting, the applicant's prosecution strategy, the state of foreign prosecution on corresponding applications, the complexity and completeness of the application and the nature of the claims. Two of the factors that tend to prolong patent examination times are the number of claims in the application and the number of examination reports required before the application is transitioned out of the examination process.

Other jurisdictions have implemented strict time limits for applicants to bring their patent applications into compliance with legal requirements. For example, the United Kingdom and Australia require the application to be allowed within 12 months from the first examination report. Non-compliance results in additional fees for time extensions or a requirement to file a new application in some cases. The 12-month time limit serves to influence the quality of patent applications filed in these jurisdictions and to discourage applicants from unnecessarily prolonging examination. Other jurisdictions, such as the United States, have divided their examination process into stages delineated by a request for continued examination (RCE). This allows examination to continue to the next stage on request and the payment of a fee or for examination to cease when it is no longer in the interests of the applicant. While Canada is not unique in its current approach of permitting an unrestricted number of iterations between the applicant and CIPO, this approach is not ideal in terms of ensuring efficient use of the Office resources and is problematic in view of the future PTA obligation.

The claims in an application are the legal foundation defining the subject matter of the invention. They form a boundary around the invention and define the scope of rights protected by the patent. Currently, there is no limit on the number of claims in a patent application, nor are there any additional fees for large numbers of claims. An application with 40 claims would be subject to the same examination fee as an application with 20 claims, despite the significant difference in time it may take to examine.

Internationally, excess claims fees are applied in most major patent systems. These fees are present in the five largest IP offices [i.e. the European Patent Office (EPO); the Japan Patent Office (JPO); the Korean Intellectual Property Office (KIPO); the National Intellectual Property Administration of the People's Republic of China (CNIPA) and the United States Patent and Trademark Office (USPTO)] and also in jurisdictions comparable in size to Canada such as Australia, the United Kingdom, India, Singapore and New Zealand. It is known from statistical reporting from foreign patent offices that the introduction of excess claims fees has had meaningful impact on applicant behaviour and resulted in a reduced number of claims in an application and more uniform patent application sizes.

Patent term adjustment in Canada-United States-Mexico Agreement

In 2018, Canada signed the Canada-United States-Mexico Agreement (CUSMA) and, on March 13, 2020, passed the Canada–United States–Mexico Agreement Implementation Act. The Government of Canada intends to make changes to Canada's IP system to ratify CUSMA. Article 20.44 of CUSMA requires that each of the parties (Canada, United States and Mexico) provide PTA in their respective jurisdictions by adjusting the term of a patent to compensate for unreasonable delays in the issuance of the patent in their jurisdiction. Unreasonable delays are defined in Article 20.44 of CUSMA. At a minimum, unreasonable delays include delays in the granting of a patent of more than five years from filing, or more than three years from requesting examination. The PTA obligation applies to all patent applications filed on or after December 1, 2020. Under CUSMA, Canada has a 4.5-year transition period for PTA implementation, during which the Government will conduct a thorough review of the commitment, and consult with a broad range of stakeholders.

Patent Cooperation Treaty

The PCT is an international treaty with more than 150 contracting states. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. Canada has been a member of the PCT since 1990.

At the 13th session of the PCT Working Group held October 5–8, 2020, amendments to the PCT Regulations were proposed for adoption at the next General Assembly in October 2021. The amendments are related to the new WIPO standard ST.26 for the presentation of sequence listings. The proposed changes to the PCT Regulations are expected to be adopted as is in October 2021, including the implementation date of January 1, 2022.

Objective

The broad objectives of the proposed amendments are to increase the efficiency of the patent examination process, to reduce the average number of examination reports required prior to disposal of a patent application, to reduce the average number of claims in patent applications, to ensure the sequence listing standard in the Patent Rules remains aligned with the international standard in the PCT and to introduce important new safeguards to prevent loss of rights.

Description

The proposed amendments to the Patent Rules are described according to the following three main themes.

Streamlining patent examination

The proposed amendments would limit the number of examination reports that would be written before examination is ceased, would limit the number of claims that would be examined for the base fee for examination and would streamline the process of allowing a patent application when only minor defects remain to be addressed by the applicant.

In the proposed process, a request for examination (RE) would entitle the applicant to receive a maximum of three examination reports or a notice of allowance (NOA), whichever comes first. At this point, examination would cease. Applicants who elect to continue examination after examination has ceased may do so by making a request for continued examination (RCE) and paying a prescribed fee. A new fee is proposed in relation to RCE. The proposed standard fee for RCE is $816. In accordance with CIPO's current approach to fee setting for small entities, it is proposed that this fee be reduced by 50% for small entities ($408).

If an applicant elects to RCE and pay the prescribed fee, the application would be returned to the examiner for further examination. The same reasoning for limiting the number of office actions after a RE holds for limiting the number of office actions after a RCE. It is proposed that the applicant receive up to two additional examination reports to bring the application into compliance, or a notice of allowance, whichever comes first, before examination would cease again. At this point an additional RCE is possible. This iterative RCE process provides an extended opportunity for examination to reach its conclusion for those cases where it is necessary (e.g. so there is no unnecessary loss of rights or reduction in the quality of examination and granted patents) while being an incentive for applicants to conclude examination in as expeditious a manner as possible. Further, the back and forth cycle to provide two examination reports can typically take up to two years when factoring applicant and office response times. At any point in time applicants can voluntarily amend their applications to ensure compliance with the Patent Act and the Patent Rules. The proposed limits on examination and availability of voluntary amendments provide sufficient opportunities for the applicant to conclude the examination process.

When examination has ceased following three examination reports after RE and following two examination reports after an RCE, it is proposed that the consequence of failing to RCE within the four-month period after the date of the report that caused examination to cease is deemed abandonment of the application. In the event the application is deemed abandoned, it is proposed that the applicant would have 12 months to reinstate the application by making a request for continued examination and paying the prescribed fees. Abandonment is an effective and existing process to clear out applications in instances when the applicant does not wish to continue examination. The RCE after a notice of allowance is an exception to the normal process and would not result in abandonment if not made. With no RCE the application would proceed to grant or abandonment.

The proposed amendments would replace subsection 86(17) of the Rules as the current mechanism to withdraw an application from allowance and return it to examination with the new RCE mechanism. The current time limits associated with current subsections 86(17) would be maintained for the situations involving an RCE following a notice of allowance.

The existing fee for making a request for examination and the final fee required to grant a patent would be amended. This proposed amendment would introduce a new component to each of these fees for each claim in excess of 20 claims in a patent application. It is proposed to set the standard fee for each excess claims over 20 at $100. The proposed fee for small entities is $50. Applications with 20 claims or fewer would not be subject to these new fees and would pay only the current rate for a request for examination or the final fee.

The proposed fees are to be applied at two distinct points in the application process:

• at the time of a RE for each claim in excess of 20 claims; and
• at the time of payment of the final fee, for each claim in excess of the greater of
  • 20 claims on the day the notice of allowance is sent, and
  • the sum of 20 claims plus the number of excess claims for which a fee was paid at the time of the RE.

The proposed amendments would create a new office action called a Conditional Notice of Allowance (CNOA). A CNOA would be issued at the discretion of the Commissioner, and would inform the applicant that the application is in condition for allowance, but certain minor defects in the application must be addressed. The CNOA would require that the applicant address the defects and pay the final fee. By satisfying the requirements of the CNOA, the application would proceed to grant.

PCT sequence listing standard

The definition of “PCT sequence listing standard” is replaced with a reference to the new PCT sequence listing standard set out in WIPO Standard ST.26.

In various sections of the Rules, amendments to the translation requirements would ensure that at least one of the languages in the text matter contained in the sequence listings is in English or French.

Housekeeping amendments and other minor amendments

Amendments to the Patent Rules made in October 2019 limited the ability for applicants to correct translation errors after a PCT international application in a foreign language enters the national phase in Canada. The proposed amendments would provide some flexibility to correct obvious errors in translations, as this change would better align the Canadian patent system on this point with those in other jurisdictions.

Incorrect fee payments could result in loss of rights for applicants and patentees and it is desired to reduce the risk of this occurring. The fees recited in Schedule 2 of the Patent Rules must be read by considering any adjustments caused by the Service Fees Act (SFA). On their face, the correct fee to pay may not be obvious, especially to those applicants who are less familiar with the prosecution of a patent application in Canada. With annual adjustments to service fees mandated by the SFA, there is an increased risk that applicant may unintentionally pay fees at the incorrect rate. CIPO has taken steps to improve electronic fee payments, which reduces the chance of incorrect fee payments, and has posted current fees on its website. An extension of time mechanism would ensure that if applicants paid an incorrect fee amount as a result of erroneous information provided by CIPO they will be able to correct the error and not risk losing patent rights.

The proposed amendments would

• (1) Modify section 3 to introduce a new extension of time provision, whether the period of time has expired or not, to pay missing fees when incorrect fee payments resulted from erroneous information provided by the Commissioner.
• (2) Remove unintended retroactivity of filing a small entity declaration in certain situations in section 5. The policy intent is that if a fee is paid at the standard fee rate, the subsequent filing of a small entity declaration within the time limit to pay the fee would not cause that fee amount to be the small entity fee rate.
• (3) Modify section 54 to clarify that in respect of PCT national phase applications, a statement of entitlement in accordance with the PCT is an acceptable alternative to the statements in paragraphs 54(a) and (b).
• (4) Modify section 73 to clarify that a priority claim made in accordance with the requirements of the PCT before the application's national phase entry date is considered to be compliant with certain requirements in the Patent Rules.
• (5) Align the English text of section 104 with the French text to reflect the original policy intent. The policy intent is that section 104 can be used to correct an error in the naming of the applicant(s) including, but not limited to, adding an applicant, removing an applicant and replacing any number of applicants.
• (6) Amended paragraph 106(a) to enable applicants to correct an error in the naming of the inventor(s) where the correction does not change the identity of the inventor. Applicants would be required to provide a statement indicating that the requested correction does not result in a change in the identity of the inventor.
• (7) Add a new authorization in section 140 for the Commissioner to waive the fee for an extension of time that is requested as a result of delays in the sending of examination reports.
• (8) Section 155 would be amended to introduce a correction mechanism for obvious errors in the translation submitted in respect of a PCT national phase application.
• (9) Modify section 160 to clarify the fact that section 78 of the Patent Act does not apply to time periods during the international phase and that applicants must rely on time extensions available under the PCT for time-limits set in the PCT.
• (10) Correct an omission in the English text in subsection 181(2). The chapeau in this subsection should end with “, before the end of that time,”
• (11) Correct a typo in the English text in Schedule 2, item 10: the term “International Search Authority” is cited but it should be written “International Searching Authority” as per the recognized term of art.
• (12) Corrected a typo in the English text in Schedule 2, item 15: The word “deemed” would replace the word “demed”.

Regulatory development

Consultation

In July 2020, CIPO held a closed consultation with a targeted group of stakeholders to receive views on, and ideas for, streamlining patent examination in Canada. This consultation allowed CIPO to receive feedback from users of the patent system on the full range of possibilities for streamlining patent examination, including non-regulatory approaches. CIPO's largest organizational stakeholders, top filing law firms, large and small Canadian entities were convened for a virtual roundtable. Fourteen stakeholders participated in the roundtable and the feedback received has been used to inform the proposal.

The consultation focused on the general concept of streamlining patent examination and included soliciting views on excess claims fees in other jurisdictions and mechanisms in other jurisdictions that limit the period of examination. The comments expressed at the consultation are summarized as follows:

Comments questioning the need for reduced patent pendency: IP law firms expressed the view that CIPO's patent pendency is currently low enough or too low. They felt CIPO is already meeting the CUSMA targets of less than 36 months' delay from a request for examination to patent grant and there is no need for further streamlining initiatives to reduce patent pendency. This stakeholder group noted that they and their clients were satisfied with the current timeliness of examination and that current patent pendency in Canada, in relation to foreign offices, is creating issues during patent examination. It was indicated that other approaches to reducing pendency, including reducing the turnaround time on subsequent office actions, could be looked at if CIPO desired to lower pendency further.

Response: While the average pendency of applications is under the CUSMA targets for avoiding unreasonable delays, CIPO is concerned about the volume of applications that remain over the threshold and outlier applications that are significantly above the average. The proposed amendments are expected to bring the pendency of applications that are over the current average pendency closer to the current average. CIPO is investing in reducing the turnaround time for subsequent office actions and, since the consultation, has amended performance targets in this area.

Comments related to aspects of the Canadian patent system that lead to higher patent pendency and a high number of claims: Some IP firms and industry groups noted there are underlying issues with the Canadian patent system that are the leading causes of a high number of claims and protracted prosecution causing longer patent pendency. The suggestion was to address those issues before considering other solutions. It was advanced that one reason for a high number of claims present in Canadian applications is the unique obvious double patenting laws in Canada. The doctrine against double patenting is also seen as causing protracted prosecution. These stakeholders also commented that the lack of clarity surrounding the patentability of certain subject matter areas, such as computer-related inventions, is a leading cause of long pendency. Small business applicants noted a different perspective in that applicants are often motivated to file larger claim sets simply because they can in Canada, without additional fees. They also noted that when it is in their interest to delay prosecution, for example to wait for prosecution to conclude in a foreign jurisdiction, they will utilize the flexibilities in the system because they are available.

Response: The perceived issues noted with the Canadian patent system are complex issues related to legislative aspects of the Patent Act. There is a recognition of the need to explore all types of solutions, including at the legislative, regulatory and operational levels. CIPO works closely with the Strategic Policy Sector to study issues of this nature brought forward but is unable to deal with these issues within the scope of this regulatory process.

Comments related to the proposed excess claims fees and a limit on the examination process not being a good fit for Canada: Some IP firms and industry groups commented that elements common to other jurisdictions, such as excess claims fees and limits on examination, do not necessarily integrate with the Canadian patent system, since Canada is a third- or fourth-tier market for patent protection. It was argued that while jurisdictions in higher tiers can impose excess claims fees and compel behavioural changes from applicants during examination, adopting similar approaches in Canada would result in applicants simply avoiding to engage the patent system in Canada. One IP firm commented that excess claims fees and limits on examination would only increase costs for applicants and complexity in the system. Other IP firms commented that the proposals were reasonable and familiar to applicants, as they were common to many foreign jurisdictions. One IP firm and one small business were generally supportive and advocated for limits on the number of examination reports rather than a fixed time limit for examination, as seen in the United Kingdom and Australia.

Response: CIPO believes the proposal with respect to fees will not have a deterring effect on applicants' engagement with the Canadian patent system. The proposed fees generally align with those in place in other similar size markets. For example, Australia is a comparable market in terms of size for patent protection, and its fees for each excess claim over 20 were AU$120 (about CAN$113) in 2020. Australia introduced changes to its excess claims fees system, including raising the fees in 2021. The new excess claims fees are AU$125 (about CAN$118) for every claim over 20 claims but less than or equal to 30 claims at the point of acceptance, and AU$250 (about CAN$236) for every claim over 30 claims at the point of acceptance. By comparison, the Canadian proposal is much less costly and makes it easier for the applicants to avoid the impact of fees by only pursuing the necessary scope of protection.

Comments on non-regulatory approaches to reduce patent pendency: Industry stakeholders and IP firms recommended that non-regulatory options to further reduce patent pendency be adopted by CIPO instead of regulatory amendments, arguing that such an option would not impact applicants financially and the Canadian patent system in a negative way. The main suggestion in terms of a non-regulatory option was that CIPO should curb the practice of piecemeal examination where the examiner does not cite all defects in the application at the earliest time in the examination process, to increase use of the patent examiner interview service and to address perceived issues with an examination practice in respect of eligible subject matter.

Response: Internal audit indicates that piecemeal examination is not a systemic issue but rather isolated occurrences where defects in applications are not brought to the attention of the applicant at the earliest point in time. CIPO provides training against piecemeal examination and monitors examiner performance on this issue within its quality system. CIPO already promotes the examiner interview service and applicants can request its use as necessary. CIPO implemented a new examination practice in respect of eligible subject matter in November 2020 that aligned with guidance in recent case law in August 2020. The patentability of certain subject matter is a difficult issue internationally and is one faced by applicants in all jurisdictions.

Modern treaty obligations and Indigenous engagement and consultation

These proposed amendments are not expected to impact treaties with the Indigenous peoples of Canada. ISED conducted an initial assessment that examined the geographical scope and subject matter of the initiative in relation to modern treaties in effect and did not identify any potential modern treaty impacts.

Instrument choice

In efforts to reduce pendency and streamline the patent examination process, CIPO considered a range of options, including taking no action (status quo), non-regulatory options, such as increased hiring of patent examiners and modifying internal processes and practices, and regulatory options. Ultimately, it was determined that a regulatory approach was the most effective approach and the necessary approach to achieve the objectives.

Status quo

The current patent application examination process can be largely applicant driven. The status quo offers limited mechanisms to reliably ensure applicants contribute to expedite the examination process. CIPO has a mandate in respect of the timeliness of examination and in CUSMA, the Government of Canada committed to make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable delays. Taking no action and accepting the status quo was not seen as a reasonable option. In the status quo scenario, it is expected that a large number of patents could be considered to have been unreasonably delayed, which could result in granting avoidable patent term adjustments.

Non-regulatory approach

Non-regulatory options to reduce patent pendency and streamline patent examination were considered and analyzed. These options included developing additional guidance to assist applicants in filing applications that are fully compliant with Canadian patent laws; encouraging applicants to voluntarily address defects cited in international applications prior to requesting examination of a PCT national phase application in Canada; further improving CIPO's capacity to expedite examination; or making additional process changes. These options were not considered viable, as they would not provide the necessary incentives for applicants to submit applications that are streamlined, free of defects and unnecessary claims, and would not address the sources of delays that are under the control of applicants.

Recently, CIPO has increased its capacity and made a number of changes to processes and practices, such as automating the sending of certain notices to applicants, updating examination training, encouraging use of online payments, introducing an examination interview service to expedite examination, and modifying the granting process to reduce the amount of time it takes.

Regulatory approach

To improve the efficiency of the patent examination process and to enable the Government to meet its obligations under CUSMA with respect to the timeliness of examination, it is necessary to impose reasonable limits on patent prosecution and to incentivize changes in applicants' behaviour with respect to the prosecution of applications before CIPO. Regulatory amendments, including introducing fees for excess claims, a request for continued examination mechanism and a conditional notice of allowance, are considered to be the most efficient way to achieving these objectives. In addition, aligning the Patent Rules with the international standard in the PCT and making additional necessary amendments can only be made through regulations. Using a regulatory instrument is the most appropriate tool to achieve these objectives and is therefore the selected option.

Regulatory analysis

Benefits and costs

A cost-benefit analysis was conducted to determine the impact of the proposed amendments on stakeholders. The proposed amendments seek to streamline patent examination and align aspects of the Canadian patent system with international norms, resulting in identifiable benefits and costs to Canadians, patent applicants and patentees, patent agents and the Government of Canada.

The proposed amendments would increase examination-related fees for patent applicants who require more examination time and for applicants who seek protection for additional claims that they believe to be valuable. It is estimated that up to 17.6% of patent applicants would submit a request for continued examination and pay the applicable fees and up to 17% of patent applicants would be subjected to excess claims fees (ECFs). The incremental costs to patent applicants would be used to recover the costs incurred by CIPO to examine patent applications and to implement the proposed amendments and to support CIPO's operations. The net present value of the quantified impacts over a 10-year period would be a net benefit of $8.7 million (annualized amount of $1.24 million), with a total benefit of $63.8 million and a total cost of $55.1 million. Present values are discounted to 2021 using a rate of 7%.

The proposed amendments are expected to result in changes in applicant behaviour that will lead to a reduction in the number of examination reports and a reduction in the number of claims in patent applications. Applicants are expected to avoid paying for new fees by filing applications that are more compliant with the Patent Act and Patent Rules, by being more proactive in amending applications to correct known defects and by carefully considering the scope of protection sought. The behaviour changes would alter trends in examination and are expected to result in reduced patent pendency. The increased efficiency of the patent examination process would allow CIPO to increase its production capacity and deploy examination resources where they are needed most.

Proposed amendments to the Patent Rules to adopt the new PCT sequence listing standard would ensure that Canada's sequence listing standard remains aligned with the sequence listing standard in the PCT. Alignment of this standard is important to ensure continued international harmonization for ease of processing of patent applications with sequence listings.

Finally, proposed amendments to introduce new safeguards and flexibilities in respect of extensions of time for incorrect fee payments and correcting obvious errors in translations provided to CIPO are intended to result in less risk of loss of rights.

The impacts of the proposed amendments have been assessed qualitatively and quantitatively.

Analytical framework

Benefits and costs associated with the proposed amendments are assessed by comparing the baseline scenario against the regulatory scenario. The baseline scenario depicts what is likely to happen in the future if the proposed amendments are not implemented. The regulatory scenario provides information on the expected incremental impacts on all affected stakeholders as a result of the proposed amendments. Patent applicants and patentees, patent agents and CIPO as well as Canadians would be affected by the proposed amendments.

CIPO's patent operations and examination trends and forecasts, combined with international benchmarking and subject matter expertise, were used to determine the incremental impact of the proposed amendments.

Following the Treasury Board Secretariat's Cost-Benefit Analysis Guide, costs and benefits attributed to Canadians are forecast. The incremental costs of paying the new fees would primarily be borne by foreign applicants since 87% of applicants seeking patent protection in Canada are foreign. Those fees paid by both domestic and foreign applicants would fund additional examination efforts and other associated costs to CIPO's operations.

The impacts of the proposed amendments are forecast over a 10-year period from FY2021–2022 to FY2030–2031. Unless otherwise stated, all costs are in present values, discounted to 2021 using a 7% discount rate and in 2021 Canadian dollars.

A detailed cost-benefit analysis report is available upon request.

Forecasting the baseline and regulatory scenarios

The expected behaviour changes were modelled based on international examination trends, applicant behaviours in countries with similar features in their patent systems, and consultation with subject matter experts. Both the baseline and regulatory scenarios assume that 6% of applications having requested examination are from small entities, with the same distribution of foreign (86.5%) and domestic applicants (13.5%).

Baseline scenario

In 2019–2020, 37 999 applications were filed in Canada and 21 005 patents were granted by CIPO. Of these, 13.2% of the applications were filed by Canadians, and 9.5% of the patents were granted to Canadians. Patent applicants and patentees are typically represented in the process of obtaining patent rights by registered patent agents.

In FY2021–2022, it is forecast that approximately 27 600 requests for examination would be received. The number of requests for examination is forecast to increase to around 39 000 by 2024 before reducing to 28 000 by 2031. The peak is a result of the reduction in the deferred examination period, from five years to four years, introduced in the October 2019 repeal and replacement of the Patent Rules.

In the absence of the proposed claim limits and associated fees, the number of claims per application is expected to remain the same through the period of analysis, with 46% of applications having greater than 20 claims. This would result in the same proportion of additional examination time being devoted to the examination of these applications.

In the absence of examination limits and associated fees, the number of examination reports to allowance of an application would follow the current distribution of the number of reports to grant: 8.74% of patents grant without an examiner's report, 46.31% grant with one examiner's report, 24.94% with two, and with 20% granting in three or more reports (four or more actions).

With no regulatory controls on the size of patent applications and the pendency of examination, it is possible that the number of claims per application and the number of examination reports per application would increase as applicants attempt to take advantage of the PTA. This would extend patent terms, which could have negative impacts on markets and result in hundreds of millions of dollars in costs to Canadians.

Regulatory scenario

The number of patent applications filed annually would be the same as the baseline scenario. However, with the proposed amendments, it is expected that

• (1) applicants would seek to avoid excess claim fees by reducing the number of claims presented in an application, from an initial 46% in excess of 20 claims in 2021 before the coming-into-force date to 17% in excess of 20 claims by 2026;
• (2) applicants would seek to avoid RCE fees and conclude examination earlier resulting in 12.4% fewer fourth and later examination reports annually and decreasing patent pendency of those applications concluding examination earlier by 9 to 12 months; and
• (3) CNOAs would be issued for 4% of patents granted annually, decreasing the patent pendency of those patents by five to eight months.

Benefits

The mechanisms that would be introduced to streamline patent examination are forecasted to create efficiencies within the patent examination process by reducing the total volume of examination work products by 3.5%, reducing patent pendency by 5–8 months for 4.4% of patents, and by reducing patent pendency by 9–12 months for 2.4% of patent applications. It is expected, as a result of more compact prosecution and compact applications, that there would be an increase in the quality of examination and granted patents thus providing greater marketplace certainty. Further, the reduction in patent pendency and efficiency gains would allow CIPO to process patent applications in an efficient and timely manner as set out in CUSMA, with a view to avoiding unreasonable or unnecessary delays leading to granting term adjustments as a consequence.

Modernization of the PCT sequence listing standard, and changes to translation and language requirements would align Canada with international norms and provide greater flexibility and certainty to applicants.

Housekeeping and miscellaneous amendments would introduce new safeguards for applicants, would resolve various ambiguities and would correct minor errors. Combined, these proposed amendments would reduce uncertainty for applicants and agents.

Overall, the proposed amendments would increase efficiencies in the examination process, reduce patent pendency, increase examination quality and more closely align Canada's patent system with international counterparts, which would provide greater certainty to applicants. The net present value of the quantified benefits total $63.8 million, which are from monetized efficiency gains in patent examination ($3.20 million) and revenues from additional fees collected from Canadian applicants ($8.2 million) and foreign applicants ($52.4 million).

Benefits to the Government

There would be an increase in revenues to CIPO as a result of the additional fees collected from patent applicants. The revenues would be used in part to recover the costs assumed by CIPO to increase focus on efficient and high-quality examination of patent applications and to implement the proposed amendments. As shown in Table 1, the total incremental revenues from fees paid by patent applicants and patentees over a 10-year period are estimated to be $60.6 million. This includes revenues collected from domestic ($8.2 million) and foreign ($52.4 million) patent applicants and patentees.

Table 1: Revenues from RCE and excess claims fees

Source	Domestic applicants	Foreign applicants	10-year total (present value)
Claims at request for examination	$5,300,186	$33,960,450	$39,260,635
Claims at final fee	$969,533	$6,212,196	$7,181,730
RCE from applicant election to set aside NOA / CNOA	$96,249	$616,709	$712,959
RCE	$1,816,223	$11,637,279	$13,453,502
Total	$8,182,191	$52,426,634	$60,608,825

Revenues generated from patent-related fees are used in CIPO's overall cost recovery, including many services and functions that do not generate fees (e.g. educational outreach, promoting innovation and IP interests in Canada and abroad). The expected revenues would be used to cover the cost of implementing and administering the proposed amendments and CIPO's operations and service delivery, which would increase CIPO's ability to be responsive to any changes in examination trends resulting from the introduction of PTA in Canada.

Time savings from efficiency gains

The introduction of compact prosecution mechanisms (RCE and CNOA) would result in a decrease in the number of examination reports, which is forecasted to result in an annual average savings equivalent to four full-time employees (FTEs) by 2025 (steady state). Additional examination time above the average allotted for applications containing an excess number of claims would be reduced, and this is forecasted to result in an average of 400 hours per year of examination time saved. These efficiencies would translate into a reduction in patent pendency and allow CIPO to shift resources to other functions. It would also better position CIPO to reduce the likelihood of unreasonable delays in the granting of patents, supporting the Government's commitment in CUSMA to reduce delays in the granting process.

Table 2 illustrates the monetized forecasted efficiency gains that would be realized by CIPO from the proposed amendments.

Table 2: Time savings benefits

Savings	Annualized amount	10-year total (present value)
Time savings from fewer examination reports (RCE and CNOA)	$420,942	$2,956,518
Time savings from fewer applications with a large number of claims	$34,414	$241,711
Total	$455,356	$3,198,230

Alignment with international norms and obligations

Canada is out of step with international norms on the number of permissible claims in a patent application without requiring additional fees. Introducing excess claims fees would align Canada's patent system with its largest trading partners who have adopted similar mechanisms to ensure efficient application processing.

An additional benefit to Canadians flowing from the proposed amendments is that amendments to the Patent Rules related to the sequence listing standard in the PCT would ensure that Canada remains compliant with the Treaty.

The proposed regulatory changes would better align the Canadian patent system with international norms and practices in other jurisdictions, ensuring greater harmony with other regimes for patent applicants, the majority of which are foreign applicants. Improving alignment of the Canadian patent system with international norms may attract foreign and domestic investments in Canada.

Benefits to patent applicants and patentees

Claim fees would encourage applicants to file and prosecute patent applications with fewer claims or to pay a fee for additional claims that they believe to be valuable. It is expected that applicants in Canada would file and prosecute fewer claims per application. Increased prosecution and examination efficiencies as a result of fewer claims may result in lower prosecution costs paid by applicants to patent agents and may result in reduced patent pendency which would increase marketplace certainty.

Approximately 80% of applications enter the Canadian system from the PCT, and the majority (98%) of applications filed in Canada have family member applications in other jurisdictions (i.e. a collection of patent applications containing the same or similar inventions and having common inventors). Since the proposed amendments would increase alignment between Canada's patent system to those of our trading partners, it is expected that applicants who have filed corresponding applications in other jurisdictions would be more likely to align their Canadian application with their foreign applications, potentially leading to reduced costs and administrative burden to prepare the Canadian application.

The proposed RCE mechanism would benefit applicants, as it provides flexibility to applicants who require more examination time while keeping costs lower for the majority of applicants who file and amend their applications to comply with Canadian law earlier during the examination process. Applicants filing in Canada through the PCT (80% of applications filed in Canada) have already received a preliminary opinion on patentability, which they can leverage to address issues prior to examination before CIPO. The introduction of the CNOA would further benefit applicants, as it would allow them to address minor formality defects without having to request further RCE and pay the associated fees. Further, as a “two for one” action, the CNOA would reduce patent pendency by 5–8 months.

Applicants would also benefit from the examination and prosecution efficiencies gained from the proposed amendments, both in terms of reduced patent pendency, and possibly reduced prosecution fees paid to agents for services rendered if examination is concluded at an earlier time point, requiring fewer services. While reduced patent pendency is not quantifiable, there are increased benefits to obtaining a patent rather than having a patent pending, for example, potential for increased marketability and saleability, improved access to capital, and increased financial compensation in the event of infringement.

A number of changes proposed provide additional benefits to applicants, namely the introduction of flexibilities to correct translation errors prior to allowance of an application, as provided in other jurisdictions, changes to the Patent Rules to address errors and ambiguities which obscure the policy intent and adoption of the PCT sequence listing standard to comply with Treaty obligations, as adopted by other trading partners.

Benefits to patent agents

Registered patent agents represent applicants in 98% of patent applications in Canada. CIPO's proposed regulatory changes would better align Canada's patent system with international norms and practices in other jurisdictions ensuring greater harmony with other regimes for patent applicants, the majority of which are foreign applicants. Approximately 80% of applications enter the Canadian system from the PCT, and the majority (98%) of applications filed in Canada have family member applications in other jurisdictions. As Canadian patent agents prepare applications to be filed globally and provide instructions to foreign patent agents and attorneys, increased harmonization of the Canadian patent system with international counterparts would benefit agents.

Benefits to Canadians

Canadians would benefit from the proposed amendments as a result of a reduction in patent pendency, examination efficiency gains and strategic Patent Office revenue reinvestment, which would reduce the potential for unreasonable or unnecessary delays leading to patent term adjustments.

Costs

The proposed amendments would result in a total quantified cost of $55.1 million, with $8.2 million of this amount assumed by Canadian patent applicants and $46.9 million by CIPO.

Additional costs, such as the transactional costs for applicants and patent agents to prosecute patent applications according to the modified examination process, are considered qualitatively. Transactional costs for applicants are presumed to be low and/or offset by savings to applicants.

Costs to Canadian patent applicants

Canadian patent applicants would assume increased costs for requesting examination of applications with more than 20 claims, and when requesting to continue examination after examination has ceased. The total costs of the proposed fees to Canadian applicants, from FY 2021–2022 to FY 2030–2031, would be $8.2 million, annualized to $1.16 million as shown in Table 3.

Excess claims fees

The proposed amendments would introduce a fee set at $100 for standard fee paying entities and $50 for small entities (i.e. a university or a business with 50 or fewer employees) for each claim in excess of 20 evaluated at the request for examination (RE) [event which initiates examination of the application] and for each claim in excess of 20 at the payment of final fee (event which concludes examination and initiates grant of the patent) for those claims for which an excess claim fee was not paid at the RE. In 2020–2021, CIPO modeled 46% of patent applications containing greater than 20 claims with an average number of excess claims being 15 (35 claims at the RE). CIPO's model forecasts that the average number of claims per patent application would decrease to a steady state of 17 claims in 2025–2026, with 17% of applications containing claims greater than 20 claims, and the average number of excess claims being 11 (31 claims at the RE). Over the forecast period (FY 2021–2022 to FY 2030–2031), it is expected that 9 364 applications filed by Canadian applicants would be subject to ECF, resulting in costs to applicants totalling $6.3 million ($5.3 million at request for examination and $1 million at final fee).

Request for continued examination fees

Under the regulatory scenario, 17.6% of applications would be subject to RCE fees. As RCE fees are required after a third examination report, it is expected that applicants would begin requesting continued examination for this reason in 2025. From that point forward, it is expected that 503 applications filed by Canadian applicants would be subject to at least one RCE each fiscal year (FY 2025–2026 to FY 2030–2031). Applying the RCE fee of $816 (reduced to $408 for small entities) to continue examination after three examination reports following the request for examination and two examination reports after RCE to the estimated volume of applications that would be received over the period of analysis, the total cost to Canadian applicants associated with RCE is estimated to be $1.9 million.

Table 3: Present value of costs to domestic applicants
Note: The analysis assumes that 13.5% of applicants are domestic (Canadian).

Fee type	Annualized amount	10-year total (present value)
Excess claims fees at request for examination	$754,627	$5,300,186
Excess claims fees at final fee	$138,040	$969,533
Request for continued examination fee	$272,293	$1,912,472
Total	$1,164,960	$8,182,191

Costs to the Government

CIPO would assume fixed implementation costs (Information Technology investments, training) as well as annual expenditures (administrative and examination time, quality control) to administer the proposed amendments. The costs have been categorized according to the implementation of the proposed amendments and systemic and organizational changes related to RCE and ECF. These costs are presented in Table 4.

In respect of RCE, it is expected that examiners would require an average of 1.5 additional hours per application to increase quality control of examination work products at specific stages to ensure high quality examination. This would ensure more comprehensive patent examination and identify defects in patent applications at the earliest moment. Administrative processing time would be required for processing RCEs and ECF, on the order of 7.5 to 15 minutes per task.

Table 4: Present value of net regulatory implementation and administration costs to CIPO

Net costs	Annualized amount	10-year total (present value)
Implementation of the proposed amendments	$418,648	$2,940,411
Systemic and organizational changes related to the proposed amendments	$6,262,577	$43,985,719
Total	$6,681,225	$46,926,130

Cost-benefit statement

• Number of years: 10 (FY 2021–2022 to FY 2030–2031)
• Base year for costing: 2021
• Present value base year: 2021
• Discount rate: 7%

Table 4a: Monetized costs

Impacted stakeholder	Description of cost	2021–2022 (present value)	2022–2023 (present value)	2026–2027 (present value)	2030–2031 (present value)	Total (present value)	Annualized value
Canadian patent applicants	ECF	$240,292	$853,984	$606,562	$461,348	$6,269,719	$892,666
	RCE fees	$2,401	$13,462	$325,662	$223,305	$1,912,472	$272,292
Canadian Intellectual Property Office	Implementation of the proposed amendments	$2,940,411	$0	$0	$0	$2,940,411	$418,648
	Systemic and organizational changes related to the proposed amendments	$1,125,948	$5,761,677	$4,517,775	$3,472,148	$43,985,719	$6,262,576
All stakeholders	Total costs	$4,309,052	$6,629,123	$5,449,999	$4,156,801	$55,108,322	$7,846,185

Table 4b: Monetized benefits

Impacted stakeholder	Description of benefit	2021–2022 (present value)	2022–2023 (present value)	2026–2027 (present value)	2030–2031 (present value)	Total (present value)	Annualized value
Canadian Intellectual Property Office	Revenue from ECF	$1,779,943	$6,325,810	$4,493,048	$3,417,393	$46,442,365	$6,612,348
	Revenue from RCE fees	$17,783	$99,720	$2,412,310	$1,654,109	$14,166,460	$2,016,985
	Time Savings Benefits	$5,826	$32,916	$434,211	$336,339	$3,198,230	$455,356
All stakeholders	Total benefits	$1,803,552	$6,458,446	$7,339,569	$5,407,841	$63,807,055	$9,084,689

Table 4c: Summary of monetized costs and benefits

Impacts	2021–2022 (present value)	2022–2023 (present value)	2026–2027 (present value)	2030–2031 (present value)	Total (present value)	Annualized value
Total costs	$4,309,052	$6,629,123	$5,449,999	$4,156,801	$55,108,322	$7,846,185
Total benefits	$1,803,552	$6,458,446	$7,339,569	$5,407,841	$63,807,055	$9,084,689
NET IMPACT	−$2,505,500	−$170,678	$1,889,570	$1,251,040	$8,698,733	$1,238,503

Sensitivity analysis

A sensitivity analysis was conducted to determine how sensitive the estimates were to changes to key variables such as the discount rate. The central analysis used a 7% discount rate as recommended by the Treasury Board of Canada Secretariat. The results of the sensitivity test using a 3% or a 10% discount rate are presented in 2021 dollars in Table 5 (results from the central analysis are indicated in bold). The magnitude of the estimates varies with the choice of the discount rate but there is no change in direction.

Table 5: Impact of changes to the discount rates on final estimates

Discount rate	3%	7%	10%
Net benefits	$76,426,292	$63,807,055	$56,313,070
Net costs	$65,001,676	$55,108,322	$49,213,377
Net impact	$11,424,615	$8,698,733	$7,099,693

Distributional analysis

As previously described, Canadian and foreign patent applicants would be impacted by the proposed amendments. Within Canada, the volume of patent applications filed at CIPO varies by province and territory as demonstrated in Table 6. A distributional analysis of cost to Canadian patent applicants across Canada is shown in Table 6. The majority of the costs would be assumed in Ontario, Quebec, Alberta and British Columbia.

Table 6: Cost to Canadian applicants by province or territory
Note: The percentage of Canadian patent applicants was derived from distribution between FY 2017–2018 and FY 2019–2020.

Province or territory	Percentage of Canadian patent applications	Annualized	10-year total
Alberta	17.13%	$199,577	$1,401,743
British Columbia	12.53%	$145,995	$1,025,408
Manitoba	2.45%	$28,539	$200,445
New Brunswick	0.80%	$9,328	$65,513
Newfoundland and Labrador	0.39%	$4,540	$31,887
Northwest Territories	0.40%	$4,698	$32,995
Nova Scotia	0.82%	$9,544	$67,034
Nunavut	0.01%	$94	$660
Ontario	39.15%	$456,054	$3,203,131
Prince Edward Island	0.30%	$3,524	$24,754
Quebec	23.11%	$269,271	$1,891,244
Saskatchewan	2.84%	$33,088	$232,396
Yukon	0.06%	$709	$4,981
Canada	100%	$1,164,960	$8,182,191

Small business lens

An analysis under the small business lens has determined that the proposed amendments would result in increased costs to small businesses for the examination of patent applications in Canada. In Canada, approximately 6% of patent applicants declare themselves as small entities. CIPO introduced flexibilities to reduce any disproportionate burden from the proposed amendments on small business, including proposing 50% fee reductions for small businesses (i.e. small entities as defined in the Patent Rules).

In the 10-year period, from FY 2021–2022 to FY 2030–2031, CIPO forecasts receiving an average of 1 809 requests per year for the examination of patent applications from small businesses. Approximately 13.5% of these requests, a total of 244 annually, will be made by Canadian small businesses and the remainder by foreign entities. CIPO forecasts that a request for continued examination will be made in approximately 17.6% of applications and excess claims fees will be paid in approximately 17% of applications.

As the new fees are avoidable, and as small businesses are more cost sensitive and may seek to avoid these fees, the actual costs to small businesses may be lower than the costs estimated by CIPO.

New fees related to excess claims in a patent application are expected to increase costs for small businesses by an average of approximately $85 per application. New fees for continuing the examination of applications are expected to increase costs for small businesses by an average of approximately $40 per application. The cost to return an application to examination after a notice of allowance remains the same as a result of the new proposed 50% fee reduction for small entities in respect of this fee. The introduction of a conditional notice of allowance mechanism is expected to benefit small businesses with modest savings as a result of avoiding a potential requirement to request continued examination on a report that would otherwise trigger that requirement.

There are some costs to small businesses that have not been captured in this analysis. One cost that was not quantified was any transactional costs to prosecute patent applications according to the modified examination process, due to a lack of data and since the cost to applicants is presumed to be low. Savings to small businesses from the proposed amendments were also not quantified. CIPO assumes, based on feedback received in the June 2020 consultation, that small businesses may save money on the preparation and prosecution of their patent applications by directing their patent agents to align their Canadian applications more closely with those in foreign jurisdictions, to address known defects earlier to increase the possibility of an early grant, and to draft more concise applications, with fewer claims, to avoid fees. There may be additional benefits to small businesses, but these are not estimated due to lack of reliable data.

Small business lens summary

• Number of small businesses impacted: 244
• Forecast cost to average small business applicant: $148
• Number of years: 10 (FY 2021–2022 to 2030–2031)
• Base year for costing: 2021
• Present value base year: 2021
• Discount rate: 7%

Table 7: Compliance costs for Canadian small businesses

Activity	Annualized amount	10-year total (present value)
Excess claims fees at request for examination	$23,339	$163,923
Excess claims fees at final fee	$3,701	$25,995
Request for continued examination fee table b10 note a	$8,033	$56,422
Total compliance cost	$35,073	$246,340
Table b10 note(s) Table b10 note a RCE for return to examination after allowance: no change to current fee for small businesses that elect to request withdrawal of the notice of allowance. Return to table b10 note a referrer

One-for-one rule

The one-for-one rule does not apply because the rule does not apply to fees and the proposed amendments would not impose an administrative burden on businesses. There are no associated reporting or record-keeping requirements in the proposed amendments. ISED is not proposing new or incremental requirements to demonstrate compliance, including collecting, processing, reporting or retaining information.

Regulatory cooperation and alignment

The proposed amendments as a whole are not related to a work plan or commitment under a formal regulatory cooperation forum (e.g. the Canada–United States Regulatory Cooperation Council, the Canadian Free Trade Agreement Regulatory Reconciliation and Cooperation Table, the Canada–European Union Comprehensive Economic and Trade Agreement Regulatory Cooperation Forum).

In developing the proposed amendments, CIPO considered approaches in place in other jurisdictions. Internationally, there is no single approach to some of the common issues facing patent offices worldwide. Globally, it is common to see regulations that streamline patent examination, including addressing the Patent Office approach to the examination process, and mechanisms to motivate applicants to file concise applications, to prosecute applications expeditiously and to utilize the resources of the Patent Office in an efficient manner. ISED studied the patent systems in several countries and regional groups, including in the United States, the European Union, Australia, New Zealand, the United Kingdom, Japan, China and Mexico. There is a variety of approaches used in the different jurisdictions to ensuring efficient patent prosecution and while there are some similarities, these approaches are not necessarily aligned. In most patent systems surveyed, a fee for excess claims is a common feature. ISED proposed a Canadian approach that focused on simplicity and affordability while also providing sufficient motivation to alter current behaviour in respect of claim drafting. Elements of the Canadian approach, such as the claims threshold and the fee amount for excess claims, are aligned primarily with elements of the U.S. and Australian approaches. Likewise, no patent system has the same approach to encourage the efficient use of the Patent Office resources and to encourage the timely disposal of patent applications. In this respect, ISED proposed a Canadian approach that would be aligned with elements of the U.S. request for continued examination system tailored to the observed historical Canadian applicant behaviours. The Canadian proposed request for continued examination system would be familiar in concept to Canadian patent applicants who engage the U.S. patent system, but would be simpler to navigate and understand. It would also offer more flexibility to applicants when compared to approaches in other jurisdictions like the United States, Australia and the United Kingdom.

The proposed amendments to the Patent Rules in respect of changes to the form of sequence listings would be compliant with the new form requirements in the PCT in respect of sequence listings. The PCT requirements incorporated flexibilities to permit Canada to introduce minor modifications that ensure amendments to the Patent Rules also conform to the official language requirements (French and English) for patent applications in Canada. The PCT now has 153 contracting states and as such the new requirements in respect of sequence listings would be in alignment with a large number of jurisdictions.

Strategic environmental assessment

In accordance with the Cabinet Directive on the Environmental Assessment of Policy, Plan and Program Proposals, ISED conducted a preliminary analysis, which concluded that the proposed amendments would not result in any positive or negative environmental effects. Therefore, a strategic environmental assessment is not required.

Gender-based analysis plus

ISED conducted a preliminary gender-based analysis plus (GBA+) scan to determine if any groups or individuals, including the general public, applicants, patentees and IP agents, would be affected differently than others based on factors such as gender, sex, age, language, education, geography, culture, ethnicity, income and ability. The analysis found no evidence that there would be any disproportionate impacts. Thus, no GBA+ impacts have been identified for these proposed amendments.

Implementation, compliance and enforcement, and service standards

Implementation

The proposed amendments would come into force on the 30th day after the day on which they are registered. It is anticipated that affected stakeholders would have a sufficient period of time between publication in the Canada Gazette, Part II, and the coming-into-force date to familiarize themselves with the regulatory changes and to implement any changes needed to their processes, documentation and information technology.

As part of the implementation, CIPO would notify stakeholders of the coming-into-force date of the proposed amendments via email. CIPO's Client Services Centre and patent examiners would be equipped to answer general questions regarding the proposed amendments. Outreach would be proactive and conducted via direct email and social media posts. The Manual of Patent Office Practice, CIPO's website and information technology would be updated to support the implementation of the proposed amendments. The Client Services Call Centre at CIPO would be equipped to answer general questions regarding the proposed changes to the Patent Rules.

Compliance and enforcement

CIPO would ensure compliance using its existing enforcement and compliance tools available under the Patent Act and the Patent Rules. When patent applications do not comply with the requirements in the Patent Act and the Patent Rules, CIPO issues notices and reports to the applicant giving them an opportunity to comply. Any new requirements introduced in the proposed amendments would be enforced through these notices and reports. As with other requirements in the Patent Act and the Patent Rules, non-compliance can lead to late fees, the deemed abandonment of the application and ultimately loss of rights. No new compliance and enforcement activity would be required for the proposed amendments and there would be no change in the manner that the requirements in the Patent Rules are enforced.

Service standards

Existing service standards (Client Service Standards of the Canadian Intellectual Property Office) would be used for the request for examination fee and the final fee, which in the proposal both comprise a new excess claims fee component. For a fee paid to request continued examination, CIPO would implement the same service standard associated to the current fee for withdrawal of notice of allowance and return to examination. The service standard for RCE would be that a confirmation that the application has been returned to examination would be sent within one month of receipt of a compliant request and payment of the prescribed fee.

In cases where a service standard is not met, a portion of the fee would be remitted to the client in accordance with the SFA, the Treasury Board Directive on Charging and Special Financial Authorities and the CIPO remission policy.

Contact

Virginie Ethier
Assistant Commissioner and Director General
Patent Branch
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Email: virginie.ethier@canada.ca
Telephone: 819‑997‑2949

PROPOSED REGULATORY TEXT

Notice is given that the Administrator in Council, pursuant to subsection 12(1)^{footnote a} of the Patent Act^{footnote b}, proposes to make the annexed Rules Amending the Patent Rules.

Interested persons may make representations concerning the proposed Rules within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Virginie Ethier, Assistant Commissioner and Director General, Patent Branch, Canadian Intellectual Property Office, Department of Industry, Place du Portage, Phase 1, 50 Victoria Street, Room 807A, Gatineau, Quebec K1A 0C9 (tel.: 819‑997‑2949; email: ic.cipo-consultations-opic.ic@canada.ca).

Ottawa, June 23, 2021

Julie Adair
Assistant Clerk of the Privy Council

Rules Amending the Patent Rules

Amendments

1 (1) The definition Administrative Instructions in subsection 1(1) of the Patent Rules^{footnote 1} is repealed.

(2) The definition PCT sequence listing standard in subsection 1(1) of the Rules is replaced by the following:

PCT sequence listing standard

means Standard ST.26 of the World Intellectual Property Organization, Recommended Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings using XML (eXtensible Markup Language), as amended from time to time. (norme PCT de listages des séquences)

(3) Paragraph (b) of the definition PCT national phase application in subsection 1(1) of the Rules is replaced by the following:

• (b) has, before October 30, 2019, complied with the requirements of subsection 58(1) of the Patent Rules, as they read immediately before that date, and, if applicable, subsection 58(2) of those Rules. (demande PCT à la phase nationale)

(4) Subsection 1(1) of the Rules is amended by adding the following in alphabetical order:

Administrative Instructions under the PCT

means the Administrative Instructions under the Patent Cooperation Treaty, including any modifications made from time to time. (Instructions administratives du PCT)

2 (1) The portion of subsection 3(3) of the Rules before paragraph (a) is replaced by the following:

Other authorized extensions

(3) The Commissioner is also authorized to extend the period of time for the payment of a fee referred to in subsection 44(1), 68(1) or (2), 80(1), 85.1(4), 86(1), (1.1), (6), (10) or (12) or 112(1), paragraph 112(5)(a) or (c) or 154(1)(c), subsection 154(2) or subparagraph 154(3)(a)(iii) or (b)(i) or (ii) — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if

(2) Section 3 of the Rules is amended by adding the following after subsection (3):

Extension — erroneous information

(3.1) The Commissioner is also authorized to extend the period of time for the payment of a fee — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if

• (a) the Commissioner provided erroneous information in writing concerning the amount of the fee;
• (b) the applicant or patentee paid an insufficient amount as a result of that erroneous information;
• (c) the applicant or patentee identifies the source of the erroneous information relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient; and
• (d) the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made.

3 The Rules are amended by adding the following after section 5:

Prescribed Fee

Standard fee paid prior to filing of small entity declaration

5.1 Despite any provision of these Rules that sets out a small entity fee and a standard fee in respect of a patent or an application for a patent, if a patentee or applicant pays the standard fee and a small entity declaration is later filed in respect of that patent or application, the applicable fee is the standard fee.

4 (1) The portion of subsection 15(1) of the Rules before paragraph (a) is replaced by the following:

Documents in English or French

15 (1) All documents or information submitted or made available to the Commissioner or the Patent Office must be in English or French, except for

(2) Paragraph 15(1)(b) of the Rules is replaced by the following:

• (b) the specification and the drawings included in an application for a patent on its filing date that are contained in a document referred to in paragraph 71(d);

(3) Subsection 15(1) of the Rules is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):

• (f) a document or information deemed to have been received by the Commissioner under section 156.

(4) Subsections 15(2) and (3) of the Rules are replaced by the following:

Translation — previously filed application for a patent

(2) If a copy of a previously filed application for a patent is submitted or made available under paragraph 67(2)(b) and all or part of that application is in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the application or part of the application in question.

Translation — specification and drawings

(3) If all or part of the specification or drawings that are contained in a document referred to in paragraph 71(d) that is submitted for the purposes of subsection 28(1) of the Act are in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the specification or drawings, or part of the specification or drawings, in question.

Sequence listing — text matter in English and French

(3.1) If a sequence listing contains text matter that is both in English and in French, only the following version of the text matter is taken into account for the purpose of interpreting the scope of protection sought or obtained:

• (a) if the sequence listing contains an indication that either English or French is the original language of that text matter, the version that is in that original language; and
• (b) in any other case, the version that is in the same language as the claims.

Sequence listing — text matter in other language

(3.2) Language-dependent free text that is contained in a sequence listing and that is in a language other than English or French is not taken into account for the purpose of interpreting the scope of protection sought or obtained.

(5) Subsections 15(5) and (6) of the Rules are replaced by the following:

Translation replaces original

(5) A translation submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, replaces the text that was in a language other than English or French.

Restriction

(6) A translation of a specification or drawing, or part of a specification or drawing, submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, must not contain any matter not reasonably to be inferred from the specification or drawings contained in the application on its filing date.

5 Subsection 26(6) of the Rules is replaced by the following:

Common representative by default — correction or decision

(6) Subject to subsections (9) and (11), in respect of an application for a patent in relation to which there are joint applicants and no common representative is appointed under subsection (3), if a correction has been made with respect to the naming of applicants under section 104 or subsection 154(6) and the correction has changed the identity of the applicants, or if a decision is made by the Commissioner under subsection 31(2), (3) or (4) of the Act, other than a decision refusing an application under one of those subsections, the joint applicant whose name appears first when listed in alphabetical order after that correction or decision — or if there is more than one correction or decision, or both a correction and a decision, after the most recent of those corrections or decisions — is deemed to be appointed as the common representative.

6 The portion of subsection 36(2) of the English version of the Rules before paragraph (a) is replaced by the following:

Exceptions

(2) For the purposes of filing an application for a patent, paying a fee under subsection 27(2) or section 27.1 of the Act or the additional fee for late payment referred to in subsection 154(4) of these Rules or complying with the requirements of subsection 154(1), (2) or (3) of these Rules,

7 Subsection 54(2) of the Rules is replaced by the following:

Statement

(2) The application must contain

• (a) a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent;
• (b) a statement to the effect that the applicant is the sole inventor of the subject matter of the invention for which an exclusive privilege or property is claimed or, if there are joint applicants, the applicants are all inventors and the sole inventors of that subject-matter; or
• (c) in respect of a PCT national phase application, a declaration as to the applicant's or, if there are joint applicants, the applicants' entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17(ii) of the Regulations under the PCT.

Translation

(2.1) If all or part of a declaration referred to in paragraph (2)(c) is in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the declaration or part in question.

8 (1) Subsection 58(1) of the Rules is replaced by the following:

PCT sequence listing standard

58 (1) If a specification discloses a nucleotide sequence or amino acid sequence that must, in accordance with the PCT sequence listing standard, be included in a sequence listing and that is not identified as forming a part of the prior art, the description must contain, in respect of that sequence, a sequence listing in electronic form and both the electronic form and the content of the sequence listing must comply with the PCT sequence listing standard.

(2) Subsection 58(4) of the Rules is replaced by the following:

Statement — application not in compliance

(4) If a sequence listing that does not comply with the PCT sequence listing standard is replaced by a sequence listing that does comply with that standard, the applicant must file a statement that the replacement listing does not go beyond the disclosure in the application for a patent as originally filed.

Sequence identification number

(4.1) If a sequence included in a sequence listing is referred to in the claims, the drawings or the part of the description other than sequence listings, the reference must include the sequence identification number, as defined in the PCT sequence listing standard, preceded by “SEQ ID NO:”.

9 Subsection 62(3) of the Rules is repealed.

10 Section 73 of the Rules is amended by adding the following after subsection (2):

PCT national phase application

(2.1) For greater certainty, in respect of an international application that has become a PCT national phase application, a priority claim made in accordance with the requirements of the Patent Cooperation Treaty before the application's national phase entry date is considered to be a request for priority made in accordance with subsection (1) and the applicant is considered to have submitted the information required under subsection 28.4(2) of the Act in accordance with subsection (2).

11 (1) The portion of subsection 80(1) of the Rules before subparagraph (a)(i) is replaced by the following:

Examination fee

80 (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for the examination of an application for a patent is

• (a) the applicable small entity fee set out in paragraph 10(a) of Schedule 2 and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the small entity fee set out in paragraph 10(b) of that Schedule, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)

(2) Paragraph 80(1)(b) of the Rules is replaced by the following:

• (b) in any other case, the applicable standard fee set out in paragraph 10(a) of Schedule 2 and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the standard fee set out in paragraph 10(b) of that Schedule.

(3) Section 80 of the Rules is amended by adding the following after subsection (1):

Claims defined in the alternative

(1.1) If a claim defines the subject matter of an invention in the alternative, the alternatives of that claim count as a single claim for the purposes of subsection (1).

12 Section 81 of the Rules is amended by adding the following after subsection (1):

Date of payment

(1.1) If an amount paid for the examination of an application for a patent is less than the prescribed fee set out in subsection 80(1) and an amendment is made to the application after the request for examination is made to reduce the number of claims such that the amount paid is greater than or equal to the amount of that prescribed fee, the fee is considered to have been paid on the day on which the amendment is made.

13 Section 83 of the Rules is amended by adding the following after subsection (1):

Date of payment

(1.1) If an amount paid for the examination of an application for a patent is less than the prescribed fee set out in subsection 80(1) and an amendment is made to the application after the request for examination is made to reduce the number of claims such that the amount paid is greater than or equal to the amount of that prescribed fee, the fee is considered to have been paid on the day on which the amendment is made.

14 The portion of subsection 84(1) of the Rules before paragraph (a) is replaced by the following:

Advancing examination

84 (1) In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of

15 The Rules are amended by adding the following after section 85:

Cessation of examination

85.1 (1) The examination of an application for a patent under subsection 35(1) of the Act ceases on the earlier of the day on which

• (a) a third notice is sent under either or both of subsections 86(2) and (5) after the request for examination is made; and
• (b) a notice of allowance or conditional notice of allowance is sent under subsection 86(1), (1.1), (6) or (10).

Request for continued examination — notice under subsection 86(2) or (5)

(2) In the case of an examination of an application for a patent that ceases by reason of a notice being sent under subsection 86(2) or (5),

• (a) the examiner must, by notice, inform the applicant of the cessation and the need to make a request for continued examination and pay the prescribed fee; and
• (b) a request for continued examination must be made and the prescribed fee must be paid not later than four months after the day on which a notice is sent under paragraph (a).

Request for continued examination — notice under subsection 86(1), (1.1), (6) or (10)

(3) In the case of an examination of an application for a patent that ceases by reason of a notice of allowance or a conditional notice of allowance being sent under subsection 86(1), (1.1), (6) or (10), the notice of allowance or conditional notice of allowance is set aside if a request for continued examination is made and the prescribed fee is paid not later than the earlier of

• (a) four months after the day on which the notice of allowance or conditional notice of allowance is sent; and
• (b) the day before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, the day before the day on which the final fee is paid again.

Fee for continued examination

(4) The prescribed fee for the continued examination of an application for a patent is

• (a) the small entity fee set out in item 13 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time, referred to in paragraph (2)(b) or subsection (3), for the payment of the fee; or
• (b) in any other case, the standard fee set out in that item.

Cessation of continued examination

(5) The continued examination of an application for a patent ceases on the earlier of the day on which

• (a) a second notice is sent under either or both of subsections 86(2) and (5) after the most recent request for continued examination was made; and
• (b) a notice of allowance or conditional notice of allowance is sent under subsection 86(1), (1.1), (6) or (10).

Notice of cessation

(6) Subsections (2) and (3) apply in respect of the cessation of a continued examination of an application for a patent.

Interpretation — number of notices

(7) A notice that is withdrawn by an examiner or by the Commissioner does not count as a notice for the purposes of subsection (1) or (5).

Non-application of subsection 3(1)

(8) Subsection 3(1) does not apply in respect of the times referred to in paragraph (2)(b) or subsection (3).

16 (1) Section 86 of the Rules is amended by adding the following after subsection (1):

Conditional notice of allowance

(1.1) If an examiner has reasonable grounds to believe that, but for certain minor defects, an application for a patent would comply with the Act and these Rules, the Commissioner may by notice inform the applicant that the application has been found to be allowable subject to certain amendments being made and requisition the applicant to, not later than four months after the day on which the notice is sent, make those amendments, or submit arguments as to why the application does comply, and pay the final fee set out in item 14 of Schedule 2.

(2) Subsections 86(14) to (18) of the Rules are replaced by the following:

Withdrawal of notice of allowance

(14) If, after a notice of allowance is sent but before a patent is issued, the examiner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules, the Commissioner must

• (a) by notice, inform the applicant of that fact and that the notice of allowance is withdrawn; and
• (b) if the final fee has been paid, refund it.

Withdrawal of conditional notice of allowance — other defects

(14.1) If, after a conditional notice of allowance is sent under subsection (1.1) but before a patent is issued, the examiner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules in respect of defects other than those referred to in the requisition, the Commissioner must

• (a) by notice, inform the applicant of that fact and that the conditional notice of allowance is withdrawn; and
• (b) if the final fee has been paid, refund it.

Withdrawal of conditional notice of allowance after reply

(15) If an applicant replies in good faith to a requisition made under subsection (1.1) on or before the date set out in subsection (16) but the examiner, after receiving the reply, has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of any of the defects referred to in the requisition, the Commissioner must

• (a) by notice, inform the applicant of that fact and that the conditional notice of allowance is withdrawn; and
• (b) if the final fee has been paid, refund it.

Date

(16) For the purpose of subsection (15), the date is the last day of the period referred to in subsection (1.1) or, if the application for a patent is deemed to be abandoned under subsection 73(2) of the Act in the circumstances referred to in paragraph 132(1)(f), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

Suspension of examination — abandoned application

(17) The examination of an application for a patent under subsection 35(1) of the Act is suspended at any time at which the application is deemed to be abandoned under section 73 of the Act.

Non-application of subsection 3(1)

(18) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (1.1), (6), (10) or (12).

17 Subsection 87(1) of the Rules is replaced by the following:

Final fee

87 (1) The prescribed final fee in respect of an application for a patent is

• (a) if the small entity status condition set out in subsection 44(2) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time for the payment of the fee, the sum of the following:
  • (i) the small entity fee set out in paragraph 14(a) of Schedule 2,
  • (ii) for each page of specification and drawings in excess of 100 pages — other than pages of a sequence listing submitted in electronic form — the fee set out in paragraph 14(b) of Schedule 2, and
  • (iii) for each claim in excess of 20 that is included in the application on the day on which the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination, the small entity fee set out in paragraph 14(c) of Schedule 2; and
• (b) in any other case, the sum of the following:
  • (i) the standard fee set out in paragraph 14(a) of Schedule 2,
  • (ii) for each page of specification and drawings in excess of 100 pages — other than pages of a sequence listing submitted in electronic form — the fee set out in paragraph 14(b) of Schedule 2, and
  • (iii) for each claim in excess of 20 that is included in the application at the time the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination, the standard fee set out in paragraph 14(c) of Schedule 2.

Claims defined in the alternative

(1.1) If a claim defines the subject matter of an invention in the alternative, the alternatives of that claim count as a single claim for the purposes of subparagraphs (1)(a)(iii) and (b)(iii).

18 Paragraph 91(a) of the Rules is replaced by the following:

• (a) in respect of a divisional application other than one resulting from a PCT national phase application, the matter may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application; or

19 (1) Paragraph 93(1)(d) of the Rules is replaced by the following:

• (d) in the case where a sample of the biological material is transferred to a substitute authority under Rule 5 of the Regulations under the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than the end of
  • (i) in respect of an application for a patent other than a PCT national phase application, a period of three months after the day on which the authority issues a receipt, and
  • (ii) in respect of a PCT national phase application, the later of a period of three months after the day on which the authority issues a receipt and a period of three months after the national phase entry date of that application;

(2) Paragraph 93(1)(f) of the Rules is replaced by the following:

• (f) in the case where a new deposit of the biological material is made with another international depositary authority under Article 4(1)(b)(i) or (ii) of the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than the end of
  • (i) in respect of an application for a patent other than a PCT national phase application, a period of three months after the day on which the authority issues a receipt, and
  • (ii) in respect of a PCT national phase application, the later of a period of three months after the day on which the authority issues a receipt and a period of three months after the national phase entry date of that application.

(3) Section 93 of the Rules is amended by adding the following after subsection (1):

PCT national phase application

(1.1) In respect of an international application that has become a PCT national phase application and that is published by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty on or before its national phase entry date, the requirement set out in paragraph (1)(b) is considered to be met only if the information referred to in that paragraph was furnished in accordance with the requirements of the Patent Cooperation Treaty before the day on which the international application is published.

20 Section 100 of the Rules is replaced by the following:

No amendment after notice of allowance or conditional notice of allowance

100 (1) Subject to subsection (2), the specification and the drawings contained in an application for a patent must not be amended by the applicant after a notice of allowance or conditional notice of allowance is sent, unless that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(3).

Exceptions

(2) The specification and the drawings may be amended by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again if

• (a) from the specification and the drawings contained in the application for a patent on the day on which the notice of allowance or conditional notice of allowance was sent, it is obvious that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended; or
• (b) the amendments are those requisitioned in the conditional notice of allowance.

21 The portion of section 104 of the Rules before paragraph (a) is replaced by the following:

Error – naming of applicants

104 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent, other than a PCT national phase application, if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, and is made by the person who submitted the application not later than the earlier of

22 Sections 105 and 106 of the Rules are replaced by the following:

Error – naming of applicants

105 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent if the request contains a statement to the effect that the correction does not add or delete the name of an applicant or change the identity of a named applicant and is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again.

Error – naming of inventors

106 The Commissioner must, on request, correct an error with respect to the naming of inventors in an application for a patent if

• (a) in the case of a request that contains a statement to the effect that the correction does not add or delete the name of an inventor or change the identity of a named inventor, the request is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again; or
• (b) in any other case, the request is made by the applicant before the day on which a notice of allowance or conditional notice of allowance is sent or, if the notice of allowance or conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(3), before the day on which another notice of allowance or conditional notice of allowance is sent.

23 Paragraph 109(1)(a) of the Rules is replaced by the following:

• (a) an error with respect to the naming of a patentee or an inventor included in the patent, if the request contains a statement to the effect that the correction does not add or delete the name of a patentee or an inventor or change the identity of a named patentee or inventor, as the case may be; or

24 Section 110 of the Rules is replaced by the following:

Non-application of subsection 3(1)

110 Subsection 3(1) does not apply in respect of the times referred to in section 104, 105 or 106 or subsection 107(1), 108(1) or 109(1), (3) or (4).

25 The portion of subsection 112(5) of the Rules before paragraph (a) is replaced by the following:

Exception

(5) For the purposes of subsection 46(1) of the Act, if a patent is granted on the basis of an application for a patent, in respect of which a fee was payable under subsection 27.1(1) of the Act for an anniversary of the filing date of the application that fell within the 12-month period preceding the day on which the patent was issued but that was not yet paid before that day, the prescribed fee to maintain in effect the rights accorded by the patent is, for the day of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued, the total of

26 (1) The portion of section 132 of the Rules before paragraph (a) is replaced by the following:

Application deemed abandoned

132 For the purposes of subsection 73(2) of the Act and subject to subsection (2), an application for a patent is deemed to be abandoned if

(2) Section 132 of the Rules is amended by striking out “or” at the end of paragraph (d) and by replacing paragraph (e) with the following:

• (e) the applicant does not make a request for continued examination of an application for a patent and pay the required fee in accordance with paragraph 85.1(2)(b);
• (f) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection;
• (g) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection; or
• (h) the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.

(3) Section 132 of the Rules is renumbered as subsection 132(1) and is amended by adding the following:

Exception

(2) Paragraphs (1)(f), (g) and (h) do not apply in respect of a notice of allowance or conditional notice of allowance that is set aside in accordance with subsection 85.1(3).

27 (1) The portion of subsection 139(1) of the Rules before paragraph (a) is replaced by the following:

Refund of fees

139 (1) Only the following fees may be refunded by the Commissioner:

(2) Subsection 139(1) of the Rules is amended by striking out “and” at the end of paragraph (h) and by adding the following after paragraph (i):

• (j) a fee paid under subsection 85.1(2) or (3) for the continued examination of an application for a patent, if the fee was paid in response to a notice referred to in subsection 85.1(7); and
• (k) any fee that is to be refunded under these Rules.

28 Section 140 of the Rules is amended by adding the following after subsection (2):

Waiver of fee — extension of time

(3) The Commissioner is authorized to waive the payment of the fee set out in item 1 of Schedule 2 that is payable for filing an application for an extension of time if the Commissioner is satisfied that the circumstances justify it and

• (a) the application is in respect of the period of time referred to in subsection 86(2) or (5);
• (b) evidence, satisfactory to the Commissioner, is provided to demonstrate that the notice under subsection 86(2) or (5) was received more than one month after the day on which the notice was sent; and
• (c) the application for an extension of time and the evidence referred to in paragraph (b) is submitted to the Commissioner within 14 days after the day on which the notice under subsection 86(2) or (5) was received by the applicant.

29 (1) Paragraph 154(1)(b) of the Rules is replaced by the following:

• (b) if the description contained in the international application — other than any sequence listings — is entirely in a language other than English or French, submit to the Commissioner an English or French translation of the description other than any sequence listings;
• (b.1) if the claims contained in the international application are entirely in a language other than English or French, submit to the Commissioner an English or French translation of the claims; and

(2) The portion of subsection 154(6) of the Rules before paragraph (a) is replaced by the following:

Correction of error – naming of applicants

(6) The Commissioner must, on request, correct an error in the records of the patent office with respect to the naming of applicants in respect of a PCT national phase application if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, and is made by the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii) not later than the earlier of

30 Subsections 155(4) and (5) of the Rules are repealed.

31 The Rules are amended by adding the following after section 155:

Translation — part of description or claims

155.1 (1) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any part of the description — other than any sequence listings — and any part of the claims that are in a language other than English or French.

Translation — abstract, request or statement

(2) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any of the following elements, or any part of the following elements, that are in a language other than English or French:

• (a) any language-dependent free text contained in a sequence listing that does not also appear in English or French;
• (b) any text matter contained in a drawing;
• (c) the abstract;
• (d) the request referred to in article 4 of the Patent Cooperation Treaty, except if the International Bureau of the World Intellectual Property Organization has published the international application on or before the national phase entry date; and
• (e) any statement made under Article 19 of the Patent Cooperation Treaty.

Notice — error in translation

155.2 (1) If the Commissioner, at any time 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 submitted under paragraph 154(1)(b) or (b.1) or section 155.1 contains an error, the Commissioner or the examiner, as the case may be, must by notice inform the applicant of the error.

Correction — error in translation

(2) An applicant may correct a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 that contains an error by submitting the following to the Commissioner before the day on which a notice of allowance or a conditional notice of allowance is sent or, if that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(3), before the day on which a notice of allowance or a conditional notice of allowance is sent again:

• (a) the corrected translation;
• (b) a request that the corrected translation replace the original translation; and
• (c) a statement to the effect that
  • (i) at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation,
  • (ii) the error in the original translation occurred despite due care having been taken in its preparation, and
  • (iii) the request is being made without unreasonable delay after the applicant became aware of the error.

Date of replacement

(3) Subject to subsection (4), a corrected translation submitted in accordance with subsection (2) replaces the original translation and is considered to have been submitted on the day on which the original translation was submitted.

Open to public inspection — date

(4) For the purpose of subsection 55(2) of the Act, if a corrected translation is submitted under subsection (2) of any part of the specification contained in an application for a patent after the application became open to public inspection, in English or French, under section 10 of the Act, the specification is considered to have become open to public inspection, in English or French, on the day on which the applicant submits the corrected translation or, if more than one corrected translation of the specification is submitted under subsection (2), on the last day on which a corrected translation is submitted.

Restriction — translation of specification or drawings

155.3 A translation of a specification or drawing, or part of a specification or drawing, submitted under section 155.1 or 155.2 must not contain any matter not reasonably to be inferred from the specification or drawings contained in the application on its filing date.

Complete copy

155.4 (1) An applicant who is required to submit a translation under section 155.1 or 155.2 must, at the same time, submit the following to the Commissioner:

• (a) in the case of a translation referred to in subsection 155.1(1) or a correction to that translation, a complete copy of the description — other than any sequence listings — or the claims, as the case may be, that substitutes the translated text for the text that was in a language other than English or French and reproduces the text that already appeared in English or French;
• (b) in the case of a translation referred to in paragraph 155.1(2)(a) or a correction to that translation, a complete copy of the sequence listing that substitutes the translated text for the language-dependent free text that was in a language other than English or French and was not also in English or French and reproduces the text that already appeared in English or French;
• (c) in the case of a translation referred to in paragraph 155.1(2)(b) or a correction to that translation, a complete copy of the drawing that substitutes the translated text for the text matter that was in a language other than English or French and reproduces the drawing and the text that already appeared in English or French; and
• (d) in the case of a translation referred to in paragraph 155.1(2)(c), (d) or (e) or a correction to that translation, a complete copy of the abstract, request or statement, as the case may be, that substitutes the translated text for the text that was in a language other than English or French and reproduces the text that already appeared in English or French.

Integrated translation

(2) For the purposes of sections 155.1 and 155.2, if a complete copy is submitted in accordance with subsection (1), the applicant need not submit the translation as a separate document.

Translation replaces original — description

155.5 (1) If a translation is submitted under paragraph 154(1)(b), the translation replaces the entirety of the description other than any sequences listings.

Translation replaces original — claims

(2) If a translation is submitted under paragraph 154(1)(b.1), the translation replaces the entirety of the claims.

Translation replaces original — element of application

(3) If a translation is submitted under section 155.1, the translation replaces the corresponding text in the PCT national phase application.

Failure to provide translation — certain elements of application

(4) If the applicant fails to provide a translation of a part of the description or claims or of any text matter contained in a drawing, in accordance with subsection 155.1(1) or paragraph 155.1(2)(b), respectively, the corresponding untranslated text in the PCT national phase application must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.

Failure to provide translation — statement

(5) If the applicant fails to provide a translation of all or part of the statement referred to in paragraph 155.1(2)(e) in accordance with that paragraph, the statement may be disregarded by the Commissioner.

Failure to provide translation or complete copy

(6) If the applicant fails to provide a translation in accordance with paragraph 155.1(2)(c) or (d) or a complete copy in accordance with paragraph 155.4(1)(a), (b) or (c), the Commissioner may by notice require the applicant to provide the translation or complete copy no later than three months after the date of the notice.

Amendments to specification and drawings

155.6 (1) If all or part of the text matter of the specification or drawings contained in an international application on its international filing date is in a language other than English or French, the specification and drawings contained in the PCT national phase application must not be amended to add matter not reasonably to be inferred from both

• (a) the specification or drawings contained in the international application on its international filing date; and
• (b) the specification or drawings contained in the international application immediately after it became a PCT national phase application, excluding any text matter that is not in English or French other than text matter in a sequence listing that is not language-dependent free text.

Sequence listing

(2) For the purposes of paragraph (1)(a), if the international application contains, on its international filing date, text matter in a sequence listing that is both in English or French and in a language other than English or French, the text matter that is in a language other than English or French is considered not to have been included in the application on that date.

Divisional application

(3) The specification and drawings contained in a divisional application resulting from a PCT national phase application must not be amended to add matter that may not be or could not have been added, under subsection (1) or this subsection, to the specification and drawings contained in the application for a patent from which the divisional application results.

Non-application of subsections (1) and (3)

(4) Subsections (1) and (3) do not apply if it is admitted in the specification that the matter is prior art with respect to the application.

Clarification — divisional application

155.7 For greater certainty, the specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless

• (a) the matter may be or could have been added — under section 155.6 of these Rules and subsection 38.2(1) and paragraph 38.2(3.1)(b) of the Act, without taking into account subsection 155.6(4) of these Rules or subsection 38.2(4) of the Act — to the specification and the drawings contained in the original application; or
• (b) it is admitted in the specification that the matter is prior art with respect to the application.

32 Sections 159 and 160 of the Rules are replaced by the following:

Non-application of certain provisions of Act

159 (1) Subsection 27(7), sections 27.01, 28 and 28.01, subsections 38.2(3) and 78.1(2) and section 78.2 of the Act do not apply in respect of a PCT national phase application.

Non-application of paragraph 38.2(3.1)(a) of Act

(2) Paragraph 38.2(3.1)(a) of the Act does not apply in respect of a divisional application resulting from the division of a PCT national phase application.

Non-application of section 78 of Act

160 Section 78 of the Act does not apply in respect of a time period referred to in that section that ends before the national phase entry date of a PCT national phase application.

33 The definitions application preceding the coming-into-force date and coming-into-force date in subsection 165(1) of the Rules are repealed.

34 Subsection 168(1) of the Rules is replaced by the following:

Non-application of certain provisions of these Rules

168 (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65 and 74, subsection 86(1.1), subparagraphs 87(1)(a)(iii) and (b)(iii), sections 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.

35 Paragraph 171(b) of the Rules is replaced by the following:

• (b) the reference to “the small entity fee set out in paragraph 14(a) of Schedule 2”, “the standard fee set out in paragraph 14(a) of Schedule 2” and “the fee set out in paragraph 14(b) of Schedule 2” in subsection 87(1) is to be read as a reference to “the small entity fee set out in subparagraph 6(b)(i) of Schedule II to the former Rules”, “the standard fee set out in paragraph 6(b)(i) of Schedule II to the former Rules” and “the fee set out in subparagraph 6(b)(ii) of Schedule 2 to the former Rules”, respectively.

36 Subsection 177(2) of the Rules is replaced by the following:

Application of section 100

(2) Section 100 applies in respect of a category 2 application only if a notice of allowance or conditional notice of allowance is sent on or after October 30, 2019.

37 The portion of subsection 181(2) of the English version of the Rules before paragraph (a) is replaced by the following:

Request for priority considered withdrawn

(2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless, before the end of that time,

38 (1) Section 187 of the Rules is amended by striking out “or” at the end of paragraph (c) and by replacing paragraph (d) with the following:

• (d) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) or 184(2) or (5) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection; or
• (e) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection.

(2) Section 187 of the Rules is renumbered as subsection 187(1) and is amended by adding the following:

Exception

(2) Paragraphs (1)(d) and (e) do not apply in respect of a notice of allowance or conditional notice of allowance that is set aside in accordance with subsection 85.1(3).

39 Subsection 188(3) of the Rules is replaced by the following:

Application of section 100

(3) Section 100 applies in respect of a category 3 application only if a notice of allowance or conditional notice of allowance is sent on or after October 30, 2019.

40 (1) Section 203 of the Rules is amended by striking out “or” at the end of paragraph (c) and by replacing paragraph (d) with the following:

• (d) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) or 199(2) or (5) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection; or
• (e) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection.

(2) Section 203 of the Rules is renumbered as subsection 203(1) and is amended by adding the following:

Exception

(2) Paragraphs (1)(d) and (e) do not apply in respect of a notice of allowance or conditional notice of allowance that is set aside in accordance with subsection 85.1(3).

41 Paragraph 204(b) of the Rules is replaced by the following:

• (b) if the final fee paid in respect of that application has not been refunded, despite subsections 86(1), (1.1), (6), (10) and (12), the Commissioner must not require payment of that fee in any notice of allowance or conditional notice of allowance sent after the reinstatement of the application.

42 Section 214 of the Rules is replaced by the following:

Communication sent before refusal

214 (1) In respect of a communication in relation to an application for a patent for which the filing date is before October 30, 2019, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsections 11(1) and (2) is to be read as a reference to “six months” if the refusal to recognize the person to whom that communication is sent as a patent agent or an attorney occurred on October 30, 2019 or within six months following that date.

Communication sent before removal

(2) In respect of a communication in relation to an application for a patent for which the filing date is before October 30, 2019, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsection 11(3) is to be read as a reference to “six months” if the name of the person to whom that communication is sent is removed from the register of patent agents on October 30, 2019 or within “six months” following that date.

43 The portion of section 218 of the Rules before paragraph (a) is replaced by the following:

Representation — application filed before October 30, 2019

218 In respect of an application for a patent for which the filing date is before October 30, 2019 — other than a divisional application that has a presentation date on or after October 30, 2019 — for which there are joint applicants and in respect of which no common representative is appointed under paragraph 26(3)(a) or (c), in respect of which no correction or decision referred to in subsection 26(6) was made — other than a decision made before October 30, 2019 — and in respect of which subsection 26(9) does not apply,

44 The portion of section 219 of the Rules before paragraph (a) is replaced by the following:

Representation — patent granted before October 30, 2019

219 In respect of a patent — other than a reissued patent — granted before October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

45 The portion of section 220 of the Rules before paragraph (a) is replaced by the following:

Representation — patent reissued before October 30, 2019

220 In respect of a patent that is reissued before October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

46 The portion of section 221 of the Rules before paragraph (a) is replaced by the following:

Representation — patent granted on or after October 30, 2019

221 In respect of a patent — other than a reissued patent — granted on or after October 30, 2019, on the basis of an application for a patent for which the filing date is before October 30, 2019, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was granted, no common representative was appointed in respect of that application,

47 The portion of section 222 of the Rules before paragraph (a) is replaced by the following:

Representation — patent reissued on or after October 30, 2019

222 In respect of a patent that is reissued — on the basis of an application for a patent for which the filing date is before October 30, 2019 — on or after October 30, 2019, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was reissued, no common representative was appointed in respect of the original patent,

48 Section 227 of the Rules is replaced by the following:

Exception to section 54 — filing date before October 30, 2019

227 In respect of an application for a patent for which the filing date is October 1, 2010 or later but before the October 30, 2019, the applicant, instead of complying with the requirements of section 54, may comply with the requirements of section 37 of the former Rules.

49 The portion of section 229 of the Rules before paragraph (b) is replaced by the following:

Final fee paid before October 30, 2019

229 If, before October 30, 2019, the applicant of an application for a patent for which the filing date is before October 30, 2019 paid, in respect of that application, the applicable final fee set out in item 6 of Schedule II to the former Rules and that fee was not refunded before October 30, 2019,

• (a) the reference to “on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again” in subsections 73(5) and 100(2), section 105 and paragraph 106(a) is to be read, in respect of that application, as a reference to “on or before the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, on or before the day on which the final fee set out in item 14 of Schedule 2 is paid”; and

50 The Rules are amended by replacing “the coming-into-force date” with “October 30, 2019” in the following provisions:

• (a) the definitions category 3 application and former Rules set out in subsection 165(1);
• (b) subsection 165(2);
• (c) subsection 168(3);
• (d) subsection 169(2);
• (e) subsection 177(3);
• (f) subsections 178(3) and (5);
• (g) the portion of subsection 181(1) before paragraph (a);
• (h) subsection 182(1);
• (i) subparagraph 183(c)(ii) and paragraph 183(d);
• (j) subparagraph 184(4)(a)(ii) and paragraph 184(4)(b);
• (k) the portion of subsection 186(1) before paragraph (a) and paragraph 186(1)(c);
• (l) paragraphs 186(2)(c) and (d);
• (m) subsections 188(2), (4) and (5);
• (n) subsections 189(2) to (4);
• (o) the portion of section 191 before paragraph (a);
• (p) section 192;
• (q) the portion of subsection 196(1) before paragraph (a);
• (r) subparagraph 197(1)(b)(ii);
• (s) subparagraph 198(c)(ii) and paragraph 198(d);
• (t) subparagraph 199(4)(a)(ii) and paragraph 199(4)(b);
• (u) the portion of subsection 202(1) before paragraph (a) and paragraph 202(1)(b);
• (v) paragraphs 202(2)(b) and (c);
• (w) the portion of section 204 before paragraph (a);
• (x) section 206;
• (y) subsection 207(1);
• (z) subsection 209(2);
• (z.1) subsections 210(1) and (3);
• (z.2) sections 212 and 213;
• (z.3) sections 216 and 217;
• (z.4) clause 218(b)(ii)(B);
• (z.5) subparagraph 219(b)(ii);
• (z.6) subparagraph 220(b)(ii);
• (z.7) paragraph 221(b);
• (z.8) paragraph 222(b);
• (z.9) section 223;
• (z.10) subsections 224(1) and (2);
• (z.11) section 228; and
• (z.12) sections 230 to 235.

51 The Rules are amended by replacing “Administrative Instructions” with “Administrative Instructions under the PCT” in the following provisions:

• (a) the portion of subsection 142(1) before paragraph (a);
• (b) section 143;
• (c) section 145; and
• (d) sections 152 and 153.

52 The Rules are amended by replacing “immediately before these Rules come into force” with “before October 30, 2019” in the following provisions:

• (a) the portion of paragraph 218(a) before subparagraph (i), subparagraph 218(a)(ii) and the portion of paragraph 218(b) before subparagraph (i);
• (b) the portion of paragraph 219(a) before subparagraph (i); and
• (c) the portion of paragraph 220(a) before subparagraph (i).

53 The Rules are amended by replacing “item 13” with “item 14” in the following provisions:

• (a) subsection 73(5);
• (b) subsections 86(1), (6), (10) and (12);
• (c) the portion of subsection 87(1) before paragraph (a);
• (d) section 127;
• (e) paragraph 171(a);
• (f) subsections 184(2) and (5);
• (g) subsections 199(2) and (5); and
• (h) paragraph 229(b).

54 (1) Schedule 2 to the Rules is amended by replacing the references after the heading “SCHEDULE 2” with the following:

(Sections 3, 4, 19, 22 to 24, 44, 45, 68, 70, 73, 80, 82, 84, 85.1, 86, 87, 100, 105, 106, 109, 112, 115, 117, 119, 121, 122, 124 to 127, 129, 132, 134, 136 to 140, 147 to 151, 154, 171, 184, 187, 199, 203, 208, 212, 213 and 229)

(2) Item 10 of Schedule 2 to the Rules is replaced by the following:

Item	Column 1 Description	Column 2 Amount ($)
10	Fee for examination of an application for a patent
	(a) the basic fee,
	(i) if the application for a patent has been the subject of an international search by the Commissioner in the Commissioner's capacity as an International Searching Authority,
	(A) small entity fee	100.00
	(B) standard fee	204.00
	(ii) in any other case,
	(A) small entity fee	408.00
	(B) standard fee	816.00
	(b) fee for each claim in excess of 20 that is included in the application
	(i) small entity fee	50.00
	(ii) standard fee	100.00

(3) Items 13 and 14 of Schedule 2 to the Rules are replaced by the following:

Item	Column 1 Description	Column 2 Amount ($)
13	Fee for continued examination of an application for a patent
	(a) small entity fee	408.00
	(b) standard fee	816.00
14	Final fee
	(a) the basic fee
	(i) small entity fee	153.00
	(ii) standard fee	306.00
	(b) fee for each page of specification and drawings in excess of 100 pages	6.12
	(c) fee for each claim in excess of 20 included in the application in respect of which the fee set out in paragraph 10(b) was not paid
	(i) small entity fee	50.00
	(ii) standard fee	100.00

(4) The portion of item 15 of Schedule 2 to the English version of the Rules in column 1 is replaced by the following:

Item	Column 1 Description
15	Fee for reinstatement of an application deemed to be abandoned, in respect of each failure to take an action referred to in the request for reinstatement

Transitional Provisions

55 In respect of an application for a patent that has a filing date before January 1, 2022, a sequence listing may, for the purposes of section 58(1) of the Rules, comply with the PCT sequence listing standard either as defined in the Rules as amended by these Rules or as defined in the Rules as they read immediately before the 30th day after the day on which these Rules are registered.

56 Subsection 80(1) of the Rules, as amended by these Rules, does not apply in respect of the examination of an application for a patent if all of the following actions are taken before the 30th day after the day on which these Rules are registered:

• (a) the request for the examination of the application is made;
• (b) the prescribed fee for the examination of an application referred to in subsection 80(1) of the Rules, as it read immediately before the 30th day after the day on which these Rules are registered, is paid; and
• (c) if applicable, the prescribed late fee referred to in section 82 of the Rules is paid.

57 Paragraph 85.1(1)(a) and subparagraphs 87(1)(a)(iii) and (b)(iii) of the Rules do not apply in respect of the examination of an application for a patent if all of the following actions are taken before the 30th day after the day on which these Rules are registered:

• (a) the request for the examination of the application is made;
• (b) the prescribed fee for the examination of an application referred to in subsection 80(1) of the Rules, as it read immediately before the 30th day after the day on which these Rules are registered, is paid; and
• (c) if applicable, the prescribed late fee referred to in section 82 of the Rules is paid.

Coming into Force

58 (1) These Rules, except sections 1 and 55, come into force on the 30th day after the day on which they are registered.

(2) Sections 1 and 55 come into force on January 1, 2022.