This post presents practical information for determining when clients and prospects qualify for reductions in payment of government fees for patent applications and patents in the US Patent and Trademark Office (USPTO).

Size of Fees

Absent qualifying for reduced fees, the default category of government fees corresponds to the schedule of largest out-of-pocket fee payments at the USPTO. You are welcome to see the USPTO fee schedule, including a breakdown of fees by qualified entity size, at the following link.
http://www.uspto.gov/about/offices/cfo/finance/fees.jsp

The Small Entity fee category for reduced government fees has existed for some time. Please see Small Entity Status below for a discussion of qualifying for small entity fees.

Further reductions in government fees as a Micro Entity have been available since March 19, 2013 by implementation of the America Invents Act (AIA). Please see Micro Entity Status below for a discussion of qualifying for micro entity fees.

So, will your fee size be large, small, or micro?

Small Entity Status

A person, small business concern, or nonprofit organization can potentially qualify to pay small entity fees.

Citations here and here.

With respect to a small business concern, the business qualifies for small entity fee status in the USPTO if all of the following are true.

• The business, including affiliates, has 500 or fewer employees.
• The business has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.

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Micro Entity Status

To qualify as a micro entity, an applicant must:

• Satisfy the requirements for Small Entity Status above; and
• Establish either of the following additional conditions:
  • Limited income and limited experience with patent application filings. Please see Gross Income Basis below.
  • Employment by, or an assignment or obligation to assign to, an institution of higher education. Please see Institution of Higher Education Basis below.

Citations here and here.

Gross Income Basis

An applicant for micro entity status on the basis of gross income, must certify all of the following.

Small Entity Requirement

• Satisfaction of the requirements for Small Entity Status above.

Application Filing Limit

• Neither the applicant nor the inventor nor a joint inventor has been named as an inventor on more than four previously filed US patent applications, calculated as follows.
  • Excluded from the count of four previously filed US patent applications are:
    • Provisional applications;
    • Foreign applications; and
    • International (PCT) applications for which the basic US national stage filing fee was not paid.
  • Further excluded from the count are applications where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment.
  • Unless excluded as indicated above, included in the count of four previously filed US patent applications, and regardless whether pending, patented, or abandoned, are:
    • US nonprovisional applications, including utility, design, continuation, and divisional applications;
    • US reissue applications; and
    • US national stage applications under the Patent Cooperation Treaty (PCT).

Gross Income Limit

Maximum Qualifying Gross Income

• Equal to three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census and listed at the following link.
  http://www.uspto.gov/patents/law/micro_entity.jsp

Applicants and Inventors

• Neither the applicant nor the inventor nor a joint inventor had a gross income exceeding the Maximum Qualifying Gross Income for the preceding calendar year

Parties with an Ownership Interest

• Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that had a gross income exceeding the Maximum Qualifying Gross Income for the preceding calendar year

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Institution of Higher Education Basis

An applicant for micro entity status in connection with an institution of higher education, must satisfy the requirements for Small Entity Status, and either of the following.

Employment by an Institution of Higher Education

• The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is a qualified institution of higher education.

Assignment or Obligation to Assign to an Institution of Higher Education

• The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to a qualified institution of higher education.

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Text Copyright © 2013 Bob Brill

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