With the advent of claim fees in 2022, applicants must now limit
the number of claims in their Canadian patent applications to avoid
government fees. While cancelling claims (particularly dependent
claims) is the simplest approach, many applicants prefer to
condense claim sets, incorporating elements of several claims into
a single claim by describing claim elements as exemplary or
optional. This article explores the legal and practical
consequences of such amendments.
1. Summary
The following is a summary of key points and recommendations
discussed in greater detail in this article:
- With a view to avoiding excess claim fees that must be
paid when examination is requested, applicants now routinely file a
reduced or condensed set of claims together with the examination
request and fee. Although applicants may simply cancel some claims,
a common practice is instead to incorporate features of those
claims into other claims, specifying that they are exemplary
