Excess Claims Fees

Rules relating to the number of claims allowed in a patent application vary between different jurisdictions, and it is advisable to consider the impact of the number of claims in an application at an early stage. Many countries and regions allow amendment prior to the payment of claims fees, and revision of the claim set at an early stage can be used to both reduce any excess claims fees and to facilitate the prosecution of an application by deleting unallowable claim formats, claims that are considered to have no commercial value or claims that are unlikely to provide basis for useful amendment during prosecution.

Excess claims fees may represent a significant cost for clients. The average claim count has been steadily increasing over the years, and applications have been known to be filed with hundreds of claims. 

PCT applications are not subject to the payment of excess claims fees. The PCT Regulations, in Rule 6.1, merely require that the number of claims be reasonable in consideration of the nature of the invention claimed. However, the number of claims should be considered and revised where possible when entering national or regional phases.

The UKIPO requires the payment of excess claims fees for each claim of a UK patent application over 25. The EPO permits up to 15 claims without extra charges, and the USPTO allows 20 claims without additional fees.

The excess claim fee charged in China's PCT national phase is different from that of all other countries. It is charged for each claim over 10 and determined based on the number of the original claims of the PCT application; any further voluntary amendment of the claims does not affect this original determination.

The Indian Patent Office also requires the payment of excess claims fees for each claim above 10. In this case, an amendment may be submitted only deleting claims to reduce the claim fee. However, once a claim is deleted, it cannot be reinstated subsequently at any stage, even by way of filing an amendment or a divisional application.

In 2022, the Canadian Intellectual Property Office (CIPO) started requiring the payment of excess claims fees at the time at which examination is requested for each claim over 20.

IP Australia have recently announced a modified excess claim fee process which will apply to Australian patent applications that have examination requested on or after 1 October 2024. Excess claims fees will now be required in respect of each claim in excess of 20 when the first examination report issues. The fee must be paid within one month of issuance of the first examination report. If the number of claims increases beyond those at the first report and beyond 20 claims, a further excess claims fee will be charged at acceptance for grant.

When drafting a claim set and any amendments on entering national or regional phases of the PCT, it is important to consider the specific requirements for excess claims fees of each jurisdiction.

If you have any questions or would like to speak to our Patents department, please contact us at mail@stratagemipm.co.uk.