What are excess claims?
In a US nonprovisional utility patent application, the USPTO will charge additional government fees for claims that exceed certain limits. The standard USPTO initial filing fees 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 over 3 or any total claims over 20 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.
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When will USPTO excess claims fees apply?
For a small entity, each independent claim in excess of three and each total claim in excess of 20 will carry additional costs. These fees are more than double for a large entity. Generally, the excess independent claim fee is significantly higher than the excess total claim fee.
How many claims can a utility patent application have without triggering additional USPTO fees?
Try to remember “3/20” when it comes to US nonprovisional utility applications. Every independent above 3 will incur additional costs. Every claim above 20 total will cost more. Large entities will pay more than double these fees.
How much is the USPTO multiple dependent claim fee?
A nonprovisional application containing a multiple dependent claim will be charged a USPTO multiple dependent claim fee, which is several hundred dollars for a small entity. Furthermore, 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, claims in both US national stage applications and 35 USC § 111(a) nonprovisional applications can be amended after the initial filing. 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 stage application. 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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