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

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.

In part II, we pointed out just how much a large number of patent claims can cost you in excess claim fees.

I left off with a teaser that you might have to pay an additional fee on top of the excess claim fee just to get those excess claims examined by the USPTO. Seriously?

Seriously. It’s a product of restriction practice at the USPTO.

The USPTO and all foreign patent offices allow you to get a patent on an invention. As in one invention. So if you have claims to multiple inventions in one application, you’ll have to cancel the claims to all the inventions but one.

Even if you already paid the excess claim fee for the extra invention(s). The USPTO won’t refund your money.

To be fair, those claims aren’t totally dead. You can get them examined if you file a divisional patent application. Which costs an additional $830[1] in official fees.

And more if you present excess claims in the divisional patent application.

In summary, on top of the hundreds or thousands of dollars you might have spent on excess claim fees, you might have to pay almost a thousand dollars more to get some of those excess claims examined.

I’m sure you’d be happy to shave an extra thousand dollars off your burn rate this month, wouldn’t you?

I’ll be back soon with suggestions for you regarding how to handle large numbers of claims, based on your particular job title.

[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.