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Changes Regarding Patent Allowance

December 19, 2019

On October 30, 2019 the new Canadian Patent Rules came into force.  The new Patent Rules include a number of significant changes, including changes related to the allowance of applications.  When a patent application is allowed by CIPO there is a statutory requirement to pay a fee (called the final fee) within a set time period. 

Notice of Allowance issued before October 30, 2019

For applications that received a Notice of Allowance prior to October 30, 2019, the deadline to pay the final fee is six (6) months.

An amendment after allowance may be filed under limited circumstances and upon payment of a fee.   Only minor amendments that would not necessitate a further search by the Examiner are accepted as an amendment after allowance.  Examples of such minor amendments include the correction of typographical errors, etc.

Since there is no continuation practice in Canada, and voluntarily filing divisional applications may lead to potentially fatal double patenting objections, substantive claim amendments can only be made by allowing the application to go abandoned for failure to pay the final fee.  Upon reinstatement, the claims may be amended by way of a Voluntary Amendment.  Such amendments would re-open examination proceedings.

Notice of Allowance issued on or after October 30, 2019

For applications that receive a Notice of Allowance on or after October 30, 2019, the deadline to pay the final fee is four (4) months. 

Under the new Patent Rules, examination proceedings may be re-opened and substantive claim amendments may be made by requesting that the Notice of Allowance be withdrawn.  A request for withdrawal together with payment of a fee must be submitted within four (4) months of the Notice of Allowance and prior to payment of the final fee. 

It is worth noting that minor amendments can still be made under an amendment after allowance.

These changes implemented by the new Patent Rules are welcome as they simplify the steps that must be taken to substantially amend the claims after receiving a Notice of Allowance.