Canada's New Excess Claims Fees Vs Double Patenting

Navigating the thin line in Canadian patent prosecution

Canada recently introduced significant changes to its patent prosecution system. The main goal is to streamline prosecution as, pursuant to the Canada-U.S.-Mexico Agreement, Canada is required to implement a system of patent term adjustment for delays in the patent office between filing and issuance of a patent. One of the changes, the addition of excess claims fees, is meant to shorten examination time by encouraging submission of more compact claim sets. However, this change also raises risk to patentees as a result of Canada's strict double patenting prohibition.

Excess claims fees

Patent applications for which examination was requested after Oct. 3, 2022, will incur excess claims fees of C$100 for each claim in excess of 20. These fees are payable at the time of the examination request and may be payable again after allowance, with the final fee, if the number of claims increases. The excess