Are disclaimed or previously canceled claims counted when calculating excess claims fees?

No, disclaimed or previously canceled claims are not counted when calculating excess claims fees in reexamination proceedings. According to MPEP 2666.04:

“A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee calculations. The same applies to a claim canceled via a prior Reexamination Certificate, reissue patent, or Certificate of Correction.”

This means that when determining the number of claims in the patent for fee calculation purposes, you should exclude:

• Claims disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a)
• Claims canceled in a prior Reexamination Certificate
• Claims canceled in a reissue patent
• Claims canceled in a Certificate of Correction

To learn more:

• excess claims fees
• disclaimed claims
• canceled claims
• fee calculations