Singin’ in the rain: patent micro entities 2

My last article addressed eligibility for micro entity status according to the America Invents Act, as well as recent rules of the United States Patent Office for administrating micro entities. This article addresses the procedures by which to maintain micro entity status, as well as how to proceed if that status changes during patent prosecution. As discussed in my last article, micro entity status results in a seventy five per cent reduction in non-attorney patent office fees. Consequently, this is a provision in the America Inventors Act that can potentially benefit inventors on small budgets who are just ‘starting out.” However, they must be aware of the many details of the law to optimally benefit from it.

Micro entity status is procedurally initially established for an application by filing a written signed certification. There must be written recertification of micro entity status for each subsequent application, and even if a subsequent application is related as a continuation, continuation in part or reissue. The patent office generally does not inquire into the bona fides of a written certification unless the patent office file clearly indicates a conflict. All applicants and inventors for a specific application must qualify individually and separately for micro entity status; otherwise no applicant or inventor is eligible. Furthermore, fees can be paid in the micro entity amount only if they are submitted with, or subsequent to, submission of the written certification to micro entity status.

Micro entity certification need only be filed once if micro entity status remains viable during prosecution of a specific application. However, if micro entity status ends during prosecution, then the patent office fees must thereafter be paid in the correct amount without the micro entity discount. For example, one applicant or inventor to an application may suddenly earn a gross income that exceeds the gross income threshold for micro entity eligibility. In fact, as a practical matter a new gross income determination for each applicant and inventor should be made annually, because micro entity status depends upon gross income in the calendar year preceding the calendar year in which the applicable fees are paid. However, where there is a transfer of rights to parties who are also micro entities, and subsequent to the filing of a micro entity certification, a second certification is not necessary.

If a loss of micro entity status is filed in an application or patent, then thereafter a new certification to micro entity status is necessary to again obtain the discounted fees. An applicant or patentee who files a notification that micro entity status is no longer appropriate will be considered a small entity by default, unless there is also notification of loss of small entity status.

There are procedures in the new rules for rectifying payment of micro entity fees that were made in good faith, but later are discovered to be erroneous. In these situations, there must be a separate paper for each application or patent which itemizes each fee which was paid in the micro entity amount erroneously. The deficiency owed, will be the sum of the differences between each erroneously paid micro entity fee and the current appropriate patent office fee for each item. For example, items for which deficiencies must be calculated could include statutory filing fees, extensions of time to file responses to examiners, or issue fees.

© 2013 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com.

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