If during response to an office action I cancel a claim and then introduce a new claim in its place then:

  1. Do I have to pay a fee for the new claim or is it covered under a previously paid fees, assuming the total number of pending claims is the same.

  2. Do I have to fill again the fee worksheet form?

1 Answer 1


There is a key distinction made between withdrawn claims and canceled claims. A canceled claim subtracts from your total, a withdrawn claim does not. I know of someone - a patent attorney - who withdrew 20 claims, added twenty claims and then got a notice of fees due on having 40 total claims on file. It is unfix-able by any action after the amendment was submitted. Even if you immediately cancel the withdrawn claims you still owe on the 40 that were once on file. He tried to pass the bill to his client.

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