USPTO Issues Final Rule Implementing Micro Entity Status

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealLast week, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 75019) issuing the Office's final rule implementing the micro entity provision of § 10 of the Leahy-Smith America Invents Act.  The notice concerns rules changes that provide procedures for claiming micro entity status, paying patent fees as a micro entity, notifying the Office of loss of micro entity status, and correcting fees paid erroneously in the micro entity amount.  According to the notice, the rules changes implementing the micro entity provision of the AIA will take effect on Tuesday, March 19, 2013 (the first-inventor-to-file provisions of AIA § 3 take effect on Saturday, March 16, 2013).

With respect to the payment of fees as a micro entity, the notice indicates that "[c]ertain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities" (emphasis added).  In other words, as the notice explains, "[t]he micro entity provisions of 35 U.S.C. 123 are currently in effect," but "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."  Thus, under the AIA's fee setting authority provisions, micro entities would have to wait until 45 days after the Office issues its final rule on the fee schedule to obtain the benefit of a 75% reduction in fees.  Given the effective date for the rules changes implementing the micro entity provision of the AIA, a final rule on the new fee schedule is likely to be published prior to February 1, 2013.

As for the rules changes, the notice indicates that a provision is being added to the rules that specifies the requirements to qualify as a micro entity, and that this provision tracks the statutory requirements for a micro entity set forth in § 10 of the AIA.  The notice also indicates that the provision also specifies procedures relating to micro entity status that largely track the regulatory requirements and procedures in 37 C.F.R. § 1.27 for small entity status.  In particular, applicants claiming micro entity status will be required to file a certification of entitlement to micro entity status (for which forms will be provided by the Office).  Such certification will only need to be filed once in an application -- although an applicant must be entitled to such status on the date that any fee is paid.  Procedures for notifying the Office of loss of micro entity status and correcting payments of patent fees paid erroneously in the micro entity amount will track the corresponding small entity provisions for notifying the Office of loss of small entity status and correcting payments of patent fees paid erroneously in the small entity amount.

While the notice states that "[t]he Office does not plan to provide advisory opinions on whether a particular entity is entitled to claim micro entity status," the notice provides some discussion of the requirements contained in 35 U.S.C. § 123 at pages 75021-22.  A discussion of the specific rules changes is provided next (at pages 75022-25), and is followed by comments submitted in response to the Office's notice of proposed rulemaking (see "USPTO Issues Proposed Rules for Implementing Micro Entity Status") and the Office's responses to those comments.


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McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

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