What are excess claims?
Excess claims come into play only in a non-provisional application. There are no excess claims fees in filing a provisional or PCT application.
The USPTO initial filing fees for a utility non-provisional application include the basic filing fee, search fee and examination fee. These standard initial filing fees allow an applicant to file up to 20 claims, of which 3 may be independent. Therefore, any independent claims in excess of three and any total claims in excess of twenty will be considered excess claims which will require payment of an excess claims fee.
How much are excess claims fees?
For a small entity, each independent claim in excess of three costs $210 and each total claim in excess of twenty costs $40 (as of the date of this post). These fees are double for a large entity. So, excess independent claims are obviously much more expensive than having a high number of dependent claims that push total beyond twenty.
What is the multiple dependent claim fee?
A non-provisional application containing a multiple dependent claim will be charged a USPTO multiple dependent claim fee, which is currently $410 for a small entity. Proper multiple dependent claims can significantly increase the total number of claims, which may also lead to excess claim fees.
Can claims be amended after initial filing to avoid additional claim fees?
Yes, in both US national stage applications and non-provisionals. In a US national stage application filed with excess or multiple dependent claims, the USPTO will issue a Notice of Insufficiency which will provide the applicant with an opportunity to amend the claims to reduce or eliminate excess claims and multiple dependent claims [see 37 CFR § 1.493(g)].
The same opportunity will be provided in a US nonprovisional application that is not a national stage filing. The applicant will receive a Notice of Missing Parts which will trigger a deadline for filing a Preliminary Amendment to cancel and amend claims [see MPEP § 607 III].
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