Monitoring Patent Costs: Excess Claims Fees

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For every applicant, big or small, patent costs are an issue. Patent prosecution requires a heavy financial commitment and every dollar saved means more funds available for broader protection, R&D, or marketing. This article discusses excess claims fees and ways you can save money on your patent filing costs.

What are excess claims fees?

Excess claims fees are fees charged by a patent office when the number of filed claims exceed a certain amount. The threshold number and the amount of the fee differ with each jurisdiction. Download a copy of our PCT national phase entry guide for country-specific details regarding excess claims fees and more.

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For some countries, the excess claims fees are negligible, so reducing the claims would probably not justify the time and attorney’s fees for making that amendment. For example, the Indonesian Patent Office charges 40,000 IDR (about 4 dollars) for every claim over 10. In other countries, the filing fees are calculated based on the number of claims originally filed in the PCT application. In those instances, reducing the number of claims would not affect the excess claims fees (and would actually increase translations costs if translations are required).

For other jurisdictions, reducing the number of claims can be an effective way of reducing filing costs. The most common example is the European Patent Office, which charges a whopping 225 EUR for every claim over 15 and 555 EUR for every claim over 50. If an applicant is able to delete or consolidate even a few claims, they can easily save thousands in filing costs.

So how do you go about reducing claims? This usually requires assistance from your patent attorney since you need to make sure not to eliminate any valuable subject matter. Common strategies include:

  • Consolidating claims to create claims having multiple dependencies;
  • Deleting claims that have little to no chance of being allowed; and
  • Amending claims so that they mirror allowed claims in a counterpart application. For example, if you have an allowed US patent with 15 claims, and the PCT application has 30 claims, you may want to consider replacing the PCT claims with the 15 allowed US claims. This will not only reduce filing costs, but can expedite examination as well.

Amending or reducing the claims is just one tip for reducing your patent costs. For more information on this topic, please contact us or join us for one of our monthly webinars.