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Don’t Waste Money on Too Many Patent Claims, Part II

In part I of this series, we discussed a common misconception among some startup executives, that large numbers of patent claims are good. We concluded that large numbers of patent claims don’t add much value.

Now, we’ll discuss the main way large numbers of patent claims can hurt your startup or small business: costs.

Under U.S. patent law, a patent applicant can file as many claims as desired. The problem is that the USPTO will charge you for the privilege. Under current[1] fees for a small entity (e.g. a typical startup or small business), a patent applicant will be charged $240 for each independent claim after the third, and $50 for each claim after the twentieth. Going back to the first example in part I, filing an application with 200 claims would cost the applicant at least $9000 in excess claim fees.

If you’re a startup executive or a small business owner, I’m sure you can find better things to spend $9000 on.

If you’re a venture capitalist who would balk at a startup wanting $9000 for pinball machines or foam parties for employees, you should balk at this kind of expense on unnecessary patent claims.

The numbers get even worse if you want to file your patent application in foreign countries. To file a patent application with fifty claims in Europe will cost you about $10,000 in excess claim fees depending on exchange rates. That 200-claim application would set you back over $100,000. The excess claims fees in China and Japan aren’t that onerous, but they’ll still add up.

Remember, these aren’t fees to a patent practitioner that you can haggle about. These are official government fees. If you don’t pay them, your patent application will get canceled before it gets started.

Needless to say, I recommend you preserve your IP budget for professional patent preparation and strategic foreign filing by reducing the number of claims you file in each jurisdiction to the maximum you can get without paying an excess claim fee.

Need another incentive to reduce the number of claims, especially independent claims, in the US? You’ll probably have to pay an additional fee on top of the excess claim fee to get those claims examined. I’ll explain more in part III.

[1] As of October 2, 2020. See https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#Patent%20Fees for the current fee schedule.