USPTO Issues Proposed Rules for Implementing Micro Entity Status

by McDonnell Boehnen Hulbert & Berghoff LLP
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                     [author: Donald Zuhn]

USPTO SealLast week, the U.S. Patent and Trademark Office announced proposed amendments to the rules of practice to implement the micro entity provision of § 10 of the Leahy-Smith America Invents Act.  Pursuant to that section of the AIA, the fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 75% for any micro entity as defined in new 35 U.S.C. § 123.  New § 123 defines micro entities as follows:

§ 123. Micro entity defined
    (a) IN GENERAL.-For purposes of this title, the term 'micro entity' means an applicant who makes a certification that the applicant-
        (1) qualifies as a small entity, as defined in regulations issued by the Director;
        (2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
        (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
        (4) has not assigned, granted, or conveyed, and is not 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, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.

The Office has published the proposed changes to the rules implementing micro entity status in a Federal Register notice (77 Fed. Reg. 31806).  The proposed changes specify procedures for claiming micro entity status, paying fees as a micro entity, notifying the Office regarding the loss of micro entity status, and correcting payments erroneously made using the reduced micro entity rate.

Among the rules changes being proposed is a new provision setting out the requirements to qualify as a micro entity (which tracks § 123 above) and procedures relating to micro entity status that track 37 C.F.R. § 1.27 (which provides a definition of small entities and procedures for establishing status as a small entity to permit payment of small entity fees; specifies when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; describes fraud on the Office as it pertains to claiming small entity status).  To claim micro entity status, applicants will have to make a certification of entitlement to that status (preferably using a form the Office is currently developing).  Applicants will only have to claim micro entity status once during the prosecution of an application, but will be permitted to pay the reduced micro entity fee amount only if the applicant is entitled to micro entity status on the date a fee is paid.  Because 35 U.S.C. § 123 requires a certification of micro entity status, the proposed rules regarding micro entity status will not permit applicants to establish micro entity status by merely paying the micro entity fee (as applicants may do to establish small entity status) or secure a refund by subsequently establishing micro entity status (as permitted for small entities).

While noting that "[t]he micro entity provisions of 35 U.S.C. 123 are currently in effect," the Office acknowledges in the notice that "no patent fee is currently eligible for the seventy-five percent micro entity reduction as no patent fee has yet been set or adjusted under section 10 of the Leahy-Smith America Invents Act."  The Office indicated that fees for micro entities would be forthcoming in a separate rulemaking.  The notice contains a discussion of the specific rules changes and the full text of new § 1.29 (Micro entity status), which would be added to 37 C.F.R. Part I.

Comments regarding the proposed changes can be sent by e-mail to micro_entity@uspto.gov; by regular mail to:  Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal.  Comments must be submitted by July 30, 2012.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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