Prosecution Timing, Excess Claims, and a Late Prior Art Reference
A Toronto software company has a Canadian application pending since 2020 with 32 claims. It received a first examiner's report in 2022 and responded in 2023. A second report issued in 2024 citing a new non-English reference and objecting to claims 1-9 and 18-32. The applicant's deadline to respond is 4 months from the report, extendable. The company has a product launch in 7 months and wants the patent granted before launch. It also has a corresponding European application facing a different citation, and a US continuation with broader claims. The company asks whether to (a) respond narrowly to the cited claims only, (b) amend all claims to align with Europe, or (c) abandon and refile. It also asks about the excess claim fee position and whether the non-English reference must be translated.
1. Evaluate the three strategic options against the launch timeline and the risk of a further report.
Read the worked answer
Option (a) - narrow response to the cited claims only. Fastest to prepare. It answers the objection without reopening the rest of the claim set, which reduces the chance of a new objection to claims the examiner did not cite. Risk: if the examiner's objection to claims 1-9 is a clarity or breadth problem that also infects the dependent claims, a narrow fix may draw a third report. Also, leaving claims 18-32 untouched means they remain objected to; you must address them or they will be refused.
Option (b) - align with Europe. Superficially attractive for portfolio consistency, but European amendments are driven by the EPO's citation and by Article 123(2) EPC practice, which is stricter than Canadian new-matter practice in some respects. Importing European wording can create Canadian support problems and will trigger a fresh examination of every amended claim. On a 7-month timeline this is the highest-risk option for delay.
Option (c) - abandon and refile. Almost always wrong here. Refiling loses the 2020 filing date, exposes the application to intervening prior art (including the 2024 citation and anything published since 2020), and resets the clock. It also risks losing priority if more than 12 months have passed since the original filing. Only consider if the current claims are unsalvageable.
Timeline analysis. A response filed within the 4-month period, with a possible extension, leaves roughly 2-3 months for the examiner to issue a further report before launch. That is tight. Recommend option (a) with a targeted amendment that also cleans up claims 18-32, plus a request for expedited examination if available, and prepare a fallback: if a third report issues, the launch can proceed with the product designed around the uncited claims.
Non-English reference. The examiner must consider it; you are entitled to a translation or to the relevant passages. Request the passages relied on and check the citation's date and content before deciding whether to distinguish or amend.
2. Advise on the excess claim fees and whether reducing claim count now saves money.
Read the worked answer
Canadian practice charges fees based on the number of claims, with excess claim fees applying above a threshold number of claims. The exact threshold and amount are set by the Rules and change over time, so confirm the current schedule before advising on figures.
Key points.
- Excess claim fees are generally payable at grant (or at a defined point in prosecution), not continuously. So the decision to cut claims now affects the final bill, not an immediate payment.
- Cutting claims to avoid fees can be false economy if the deleted claims were your fallback positions. A claim you delete to save a fee may cost far more if you later need it in litigation and cannot amend post-grant without a reissue or disclaimer.
- Conversely, keeping 32 claims when 10 would do increases cost and examination burden.
Recommended approach. Identify which of claims 18-32 are genuinely independent scope and which are redundant. Merge or delete the redundant ones, keep the fallbacks that cover realistic competitor designs, and accept the excess fee for the survivors. This is a scope decision, not a fee-avoidance decision. Do not let the fee drive the claim strategy on a product launch timeline.
Interaction with option (b). If the company aligns with Europe and cuts to 15 claims, it saves fees but loses Canadian-specific fallbacks that the European case may not need. Flag that to the client explicitly.