Amending claims in response to "notice requiring excess claims fees"

[Chas]

Can I file an amendment in which I cancel, add, and modify claims in response to a "Notice Requiring Excess Claims Fees"?  Does anyone have a definitive answer, a means for obtaining one, or a citation to a law/rule?  Thanks.

[comodonejp]

It is my understanding that there will be no additional claim fee if the number of total claims is 20 or less and the number of independent claims is 3 or less. Within those numbers, USPTO has no basis to collect additional claim fee. Once you paid the excess claim fee, it will not be refundable though.

[Chas]

Thanks comodonejp.  My original post was a bit confusing (which I've now edited). 

I was just wondering if I can amend my claims in response to a "Notice Requiring Excess Claims Fees".  The notice states that I can cancel claims.  But it is less clear to me whether I can also add and modify claims in my response.  (Someone at the PTO told me I could add claims, but I'm not confident this is correct.)

[Robert K S]

Sure, of course you can.  Worst case scenario, you will receive an action telling you that your amendments have not been entered (and hopefully providing valid rationale for not doing so).

Slightly less-than-worst-case scenario, you will receive a restriction requirement and your excess claims fees, if you paid any, will have been wasted.

[khazzah]

I was just wondering if I can amend my claims in response to a "Notice Requiring Excess Claims Fees".  The notice states that I can cancel claims.  But it is less clear to me whether I can also add and modify claims in my response.  (Someone at the PTO told me I could add claims, but I'm not confident this is correct.)

I don't have any specific authority for this, but I am certain that you can avoid paying fees if you file a paper with any combination of add/cancel that results in no more claims that you paid for.

If you received the Notice before the first OA, I'd file the paper as a Preliminary Amendment.

If you received the Notice as a result of a Response to Office Action, I'd file the paper as a Supplemental Response.

Sure, of course you can. Worst case scenario, you will receive an action telling you that your amendments have not been entered (and hopefully providing valid rationale for not doing so).

Robert makes a good point that actions that are allowable under the Notice of Excess Claims may be prohibited by something else.

I can't think of any valid rationale for refusing to cancel claims. Isn't that allowed even After Final?

Adding claims could definitely be refused After Final.

In fact, if the claims you're adding are of different scope than those in the case already, I wonder if you even have a right to them in a Supplemental after Non-Final? IOW, surely you can't just file a series of Responses to Non-Final, adding claims each time, and calling this Response to NF, Suppl Response to NF #1, Suppl Response to NF #2, etc. Can you?
 

[patentsusa]

Can I file an amendment in which I cancel, add, and modify claims in response to a "Notice Requiring Excess Claims Fees"?  Does anyone have a definitive answer, a means for obtaining one, or a citation to a law/rule?  Thanks.

It would usually be cheaper for a client to pay fees than to pay for your time to amend claims.  If you wanted to amend claims for some other reason, I don't see why you wouldn't be able to do so but may have term addition issues.