Amendments to Canada’s Patent Rules, coming into force on October 3, 2022, will introduce excess claim fees into Canada’s patent regime (among other changes). If examination of a Canadian patent application is requested on or after October 3, 2022, excess claim fees may be due if the patent application exceeds 20 claims at the time of requesting examination or at any time after examination is requested. 

How Much Do Excess Claim Fees Cost?

Excess claim fees are $100 per excess claim (or $50 per excess claim, if the patent Applicant qualifies as a “small entity”). These fees are assessed at the time of requesting examination, and at the time of paying the final fee after the Patent Office has allowed the patent application.

For example, if your application has 28 claims at the time of requesting examination, the excess claim fees will be $800 for the eight excess claims (or $400 if the Applicant is a small entity).

Excess claim fees may also be due at the time of paying the final fee, if the patent application contained more than 20 claims at any time after examination was requested (and taking into account any excess claim fees that were paid when examination was requested).

For example, if your application had 28 claims when examination was requested (at which time, excess claim fees were paid for eight claims), and the application is subsequently amended to have 30 claims in total, then the applicant will owe $200 (or $100 if the applicant is a small entity) for two additional excess claims at the final fee deadline. 

How Do You Avoid Excess Claim Fees?

If you request examination of your Canadian patent application on or before September 29, 2022, then the new excess claim fees will not apply to your Canadian patent application. 

Furthermore, if you request examination of your Canadian patent application on or after October 3, 2022, you can still avoid excess claim fees by ensuring that your Canadian patent application does not contain more than 20 claims when examination is requested, and at any time after examination is requested.

What Should I Do Now?

If you need advice on how to efficiently manage excess claim fees in Canada, taking into account all strategic considerations, please contact one of our Patent Agents:

Shohini Bagchee – sbagchee@fieldlaw.com

Prita Madan – pmadan@fieldlaw.com