Claim Reduction Strategies In Canada: A Global Perspective

Amendments to the Canadian Patent Rules in October 2022 included the introduction of excess claim fees where there are more than 20 claims in a patent application, resulting in the need for a more strategic approach to patent prosecution before the Canadian Intellectual Property Office (CIPO) in order to reduce the number of claims in a claim set.

Applicants with global patent portfolios are already familiar with the concept of excess claim fees, since many jurisdictions now impose excess claim fees. For example, the United States Patent and Trademark Office (USPTO) imposes fees for claim sets with over 20 claims or for claim sets with more than 3 independent claims. The European Patent Office (EPO) imposes fees for each claim beyond 15 claims, and the Chinese Patent Office (CNIPA) imposes fees for more than 10 claims.