CIPO May Process Final Fees Faster than Expected

Several actions can, at least theoretically, be undertaken with respect to a patent application after the final fee has been paid following allowance. Section 4(10)(b) of the Patent Rules allows for a final fee to be refunded if a request for its return is received before the start of technical preparations for issuance of a patent. This allows an additional opportunity to amend the patent application, for example if an issue is discovered only at a late stage. Section 36(2) of the Patent Act requires that a divisional application must be filed before issuance of the parent application. Theoretically, the divisional may therefore be filed after payment of the final fee.

In the past, the time interval between payment of the final fee and the start of technical preparations for issuance has been on the order of 8 to 9 weeks. However, recent experience has shown that there is considerable variance in this estimate. In one recent case, the time interval between payment of the final fee and the start of technical preparations was very short – at just over one week.

We have always advised that filing of amendments and divisional applications should be made before or concurrently with payment of the final fee, as much as possible, rather than relying on the unpredictable window of time between payment of the final fee and issuance of the patent. In view of the above, it appears to be more important than ever to follow this strategy as closely as possible, since the time window can be much shorter than expected.

By Michael Maskery