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Back in April 2018, the UK IPO introduced additional claims fees of £20 for each claim of a UK patent application over 25. Prior to this change, a UK patent application or patent could have any number of claims without incurring additional official fees.
Canada has now become one of the latest countries to introduce excess claims fees. Changes to the Canadian Patent Rules came into force on 3 October 2022 that require applicants to pay $100 CAD for each claim in the application in excess of 20 at the time at which examination is requested. The most significant of the remaining changes requires applicants in Canada to file a Request for Continued Examination (RCE) in order to respond to a third examination report and every second examination report thereafter. Filing an RCE requires payment of fees of over $800 CAD with discounts available for small entity applicants.
The country in which an initial application, or priority application, is filed may impose no additional fees upon an applicant based upon the number of claims in an application. However, the future costs of an application including a large number of claims should be considered at the time of drafting if the applicant is considering seeking patent protection in countries where official fees are imposed for what are commonly referred to as ‘excess’ claims.
Claims fees may represent a significant cost for clients whose applications contain a large number of claims. Applications with 100 claims are not unheard of and such an application would incur claims fees of thousands of pounds in most countries. However, the best approach to managing ‘excess’ claims fees will be dependent upon the specific countries in which protection will be sought. International practices in relation to claims fees are not consistent and applicants may need to take such fees into account as early as the initial filing of an application.
Examples of claims fees practices around the world include:
No claims fees.
Countries including Mexico, Qatar, impose no additional fees based upon the number of claims in an application.
Claims fees are payable at the time of acceptance and/or grant of the application.
Countries such as Australia do not impose a fee based upon the number of claims until an application reaches grant. This approach allows applicants to proceed with prosecution and then only pay claims fees based upon the number of claims found to be allowable during examination. Some countries allow amendment of the application during prosecution, or at the time of grant, in order to reduce or eliminate any claims fees payable.
Claims fees due at the time at which examination is requested.
The UK, Brazil, Israel, Japan, South Korea, and Canada (since 3 October 2022) require an applicant to pay claims fees when filing a request for substantive examination. Some countries provide the opportunity to amend the claims prior to the filing of an examination request in order to reduce or eliminate any claims fees payable.
Claims fees due upon filing.
Some countries and regional patent organisations require applicants to pay claims fees at the time at which an application is filed. However, within this category there are significant differences in how possible voluntary amendments with the aim of reducing claims fees are handled. For example:
The Eurasian Patent Office allows the filing of voluntary amendments at the time of filing to reduce excess claims fees.
The Indian patent office allows claims to be deleted at the time of filing but further amendments are limited.
The European Patent Office (EPO) formally seeks payment of excess claims fees at the time at which an application is filed but will also issue a communication in the regional phase of an international application following the non-payment of such fees, which communication sets a time limit for payment of the fees and/or the filing of amendments which may reduce the fees payable.
Excess claims fees in China are based upon the PCT application as originally published and so no further amendments can be made for the purposes of reducing or eliminating any claims fees payable.
With such variations in practice between countries and regions then it is advisable to consider the impact of the number of claims in an application at an early stage. For applications in countries that allow amendment prior to the payment of claims fees, applicants may consider the deletion of claims or, where allowable, the combination of claims features on an alternative or optional basis in order to retain the text of the original claims within the application. For countries in which no amendments can be made, care should be taken to minimise future costs when the application is drafted by avoiding unallowable claim formats, claims of no commercial value, or claims that are unlikely to provide basis for a useful amendment during prosecution.
If you have any questions in relation to claims fees around the world then the AA Thornton attorneys would be happy to help. Please reach out to us via our contact page if we can be of any assistance.
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