Claim fees: how to avoid their payment? - Obtaining an EP Patent - A crash course for the US applicant #6

Claim fees: how to avoid their payment?

When filing a patent application, most patent legislations require the payment of claim fees above a certain number of claims. The rules of calculation of claim fees differ from one country to another. 

In the US, the claim fees are to be paid for:

• Each claim in excess of 20 (100.00 USD /claim);
• Each independent claim in excess of 3 (480.00 USD /claim);
• The presence of a multiple dependent claim in the set of claims (860.00 USD).

Consequently, if the set of claims contains no more than 20 claims, no more than 3 independent claims and no multiple dependent claim, then no claim fee is to be paid.

The EP standpoint

The rule in Europe is different. Claim fees are to be paid for:

• the 16th and each subsequent claim up to 50 (265,00 EUR);
• the 51st and each subsequent claim (660,00 EUR).

Consequently, no claim fee is to be paid if the set of claims contains a multiple dependent claim or more than 3 independent claims. However, the total number of claims above which claim fees are due is only 15, whereas it is 20 in the US.

As an applicant, what should you do?

To avoid the payment of claim fees when filing a patent application at the EPO, you would need to reduce the total number of claims to 15.

However, contrary to US practice where a preliminary amendment can be filed at any time before the issuance of the first office action, the European rules are more stringent regarding the time at which claims can be amended.

The rules depend on whether the European application is a regional phase of a PCT application (Euro-PCT) or a direct filing:

• Euro-PCT: After the entry into European phase, the applicant is given the opportunity to amend the claims (and as a result reduce the number of claims) before the issuance of the supplementary search report, pursuant to the issuance of the notification according to Rules 161(2) and 162 EPC (response time: 6 months).
• Direct filing: The claims cannot be amended until the issuance of the search report (R137(1) EPC) and there is no equivalent of the notification according to Rule 161 EPC for Euro-PCTs. If at the time of filing, the set of claims contains more than 15 claims but no claim fee is paid, the EPO will establish the search report based on the first fifteen claims but before initiating the search, the EPO will issue a notification giving the applicant the opportunity to add more claims for the search by paying claim fees (Rule 45 EPC, response time : 1 month). It is possible to choose the claims which will be added to the search. Alternatively, it is possible to file a European patent application with no claims. In that case, the EPO will issue a notification giving the applicant the opportunity to file the missing claims (Rule 58, response time: 2 months). But the claims must be supported by the description. The EPO is very strict on the issue of new matter. Consequently, this option may be risky.

In conclusion, after the filing of a European patent application, a US applicant is given an opportunity to reduce the number of claims to avoid the payment of claim fees only if the EP application originates from a PCT. If it is a direct filing, so as to avoid the payment of claim fees, the set of claims should contain less than 15 claims at the time of filing.

References

• Rule 137(1) EPC
• Rules 161(2) and 162 EPC
• Rule 58 EPC
• EPO fee schedule
• USPTO fee schedule