In a move designed to help independent inventors, the United States Patent and Trademark Office (USPTO) is proposing to amend the rules of practice in patent cases to implement the micro entity provision of the America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA. The fee setting provision in the AIA sets the micro entity discount at 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.
More specifically, the Office is proposing changes to the rules of practice to set out the procedures for an applicant to claim micro entity status and to pay patent fees as a micro entity. The USPTO likewise is proposing changes to the rules of practice to set procedures for an applicant to notify the Office of the loss of micro entity status and to correct payments of patent fees erroneously paid in the micro entity amount. The USPTO published these proposed changes to rules in the Federal Register on May 30, 2012.
To establish micro entity status under the proposed rules, the applicant will have to certify that the applicant:
- Has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid (an applicant is not considered to be named on a previously filed application for purposes of the proposed rules if the applicant 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 previous employment);
- 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 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
- 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 three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Publication in the Federal Register of the proposed rules to implement the micro entity provision of the AIA begins a sixty-day public comment period. During this time, the public may provide written input about the proposed rules. Further information about the proposed rules to implement micro entity provision may be found in the Federal Register Notice available here.