What are excess claims?

Excess claims fees come into play only in a US nonprovisional patent 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.

There are no excess claims fees in filing a provisional or PCT application.

How much are USPTO excess claims fees?

For a small entity, each independent claim in excess of three costs $240 and each total claim in excess of 20 costs $50 (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.

Remember 3/20

Try to remember “3/20” when it comes to US nonprovisional utility applications. Every independent above 3 will cost $240 each. Every claim above 20 total will cost $50 each. Large entities will pay double these fees.

How much is the USPTO 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 $430 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 35 USC § 111(a) nonprovisional applications. If a US national phase application is filed with excess or multiple dependent claims, the USPTO will issue a Notice of Insufficiency. The applicant can then reduce USPTO fees by amending the claims to reduce or eliminate excess claims and multiple dependent claims [see 37 CFR § 1.492].

The same opportunity will be provided in a Section 111(a) US nonprovisional application that is not a national phase 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].

Need help with your patent claims?

Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you minimize or avoid excess claims fees.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com