Without Abandonment: A Simplified Way to Add or Amend Claims in Canada after Allowance

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April 29, 2021

With the changes to Canada’s Patent Rules that came into effect on October 30, 2019, an avenue is now available for amending the claims of an application after allowance without the need to abandon and reinstate the application. This avenue simplifies the procedure for having additional claims considered after receiving a notice of allowance, which is routinely desired in view of Canada’s strict double-patenting prohibition.

Background

It is good practice before the Canadian Intellectual Property Office (“CIPO”) to make efforts to ensure that all desired claim sets supported by a patent application be presented before the examiner of the original patent application. This has been important in view of Canada’s unique and particularly strict obviousness-type double-patenting prohibition based on the claims of a parent application and the lack of a suitable remedy to overcome a double-patenting rejection that arises in a subsequent application such as by the entry of a terminal disclaimer.

For example, it has traditionally been advisable to present claim sets from related continuation applications in the U.S., or divisional applications arising in the U.S. and/or other jurisdictions, in the same application. This can have the effect of either having the claims examined and allowed together or triggering a lack of unity objection to create a potential safeguard against an obviousness-type double patenting objection being raised in a divisional application, which is filed in response to the lack of unity objection.

The Supreme Court of Canada has ruled that if a patent is granted on a divisional application directed by CIPO, it should not be invalidated by reason only of the grant of the original patent. It is worth noting that a Federal Court judge in a recent decision made an obiter comment to the effect that a divisional application filed in response to an objection (as opposed to a final rejection) was voluntary and so not entitled to protection against double patenting. However, this comment has not changed CIPO’s examination practices and has yet to be adopted in any other Federal Court decision.

These efforts to present all desired claim sets together in some cases result in the need to add claims to an application that has already been allowed. This situation can arise when prosecution in foreign jurisdictions is out of step with the prosecution of the original Canadian application. However, prior to the amendments to the Rules, an applicant was forced to allow its application to become abandoned by failing to pay the final fee due (at that time) within six months of the mailing date of a notice of allowance, and reinstating the application by paying a reinstatement fee, paying the final fee that was due at the time of abandonment, and presenting a voluntary amendment to introduce the additional claim set(s). By doing so, the examiner was forced to consider the new claims and either issue a new office action (which may include a lack of unity objection) or reaffirm the allowability.

While this reinstatement mechanism achieved the desired goal, it had drawbacks - it required the applicant to wait for the final fee payment deadline to pass before having the ability to reinstate, and also resulted in the abandonment being made of record. Moreover, as noted above, in order to reinstate the application and present the new claims, the final fee (which was due at the time the application was intentionally abandoned), had to be paid when reinstating the application, and thus the application would proceed straight to issuance if the allowability was reaffirmed.

New Rules

With the changes to the Rules, an avenue is now available for substantively amending an application after allowance. 

This new avenue provides a mechanism to amend an application where amendments other than obvious errors are desired, providing recourse to an applicant to introduce new claims or claim sets after allowance.

The new avenue requires the submission of:

a) a request to withdraw the application from allowance,

b) a C$408 fee (as of January 1, 2021), and

c) the desired amendment,

prior to payment of the final fee.

Once the request is submitted, the application will be returned to the examiner for further review, including consideration of the submitted amendment. The desired effect of either having the claims examined and allowed together or triggering a lack of unity of objection can therefore now be achieved in a simplified manner, importantly without introducing delays by abandoning and reinstating the application.

Practice Tips

• While the new Rules provide a simplified procedure for adding or amending claims to applications after receiving a notice of allowance, it is recommended, where possible, to ensure that all claims are presented prior to allowance - for example, by adding such claims by means of a voluntary amendment or when responding to an examination report.
• At the time of receiving a notice of allowance, applicants should consider whether any additional claims or other amendments to the claims or description need to be presented. If so, the applicant can withdraw the application from allowance to enter the desired amendments.

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