Micro Entity Fees on US patent applications

January 2013

The Leahy-Smith America Invents Act (AIA) provides for a new status of applicant/inventor as a “micro-entity”.  This enables a 75% reduction in the amount of some fees to be paid in the United States Patent and Trademark Office (USPTO).  The USPTO has just issued (19 December 2012) rule 37 CFR Part 1, section 1.29, effective 16 March 2013 that sets out the requirements.

Micro-entity status
There are two grounds on which an applicant may claim micro-entity status:

Under: 

  1. section 1.29(a), where:
  • the applicant is a small entity;
  • neither the applicant nor any inventor is named as an inventor on more than four preceding US patent applications;
  • neither the applicant nor any inventor had a gross income more than three times the median household income in the preceding calendar year; AND
  • neither the applicant nor any inventor has granted (or is obliged to grant) any right in the patent application to an entity that had a gross income more than three times the median household income in the preceding calendar year.

      Or

2.  section 1.29(d), where:

  • the applicant is a small entity; AND
    • Either:
    • the applicant’s employer is a US institution of higher education; OR
    • the applicant has granted (or is obliged to grant) any right in the patent application to a US institution of higher education.

Small entity status
Small entity status currently applies to:

  • individuals;
  • small businesses whose number of employees, including affiliates, does not exceed 500 persons; and
  • non-profit organisations, including universities, provided there has been no transfer of rights in the patent application to someone who is not a small entity.

Previous applications
The following do not count as “US patent applications” (relevant to 1(b) above):

  • applications filed in another country;
  • US provisional applications;
  • international (PCT) applications for which the US national phase is not entered;
  • applications resulting from a previous employment, if the applicant assigned, or was under an obligation to assign, all ownership rights in the application to the then employer.

However, continuation, parent and divisional applications all do count towards the four-maximum.

Summary
Micro-entity status is thus available through only two routes:

  1. through each inventor/applicant having, in the calendar year preceding the date of payment of a fee paid at micro-entity rates, an income of less than (the equivalent of) approximately $150,162 (in 2011), or
  2. by being employed by, or by licensing the application in some way to, a US university.

Thus, UK universities will not be eligible for micro-entity status, unless they licence or transfer a right to a US university.

The "Micro Entity" 75% discount will apply to fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

The USPTO will provide a self-certification form, which would need to be filed once in any application to give the applicant "Micro Entity" status.  However, micro-entity status must still apply as and when a fee is paid.  That is, it ends once the conditions are no longer applicable.  The USPTO will publish the applicable income limit each year.

Micro Entity Fees were included in the proposed FY 2013 fee schedule, the first fee setting by the USPTO under the authority granted by the AIA.  These fees might not actually be implemented until as late as March 2013.

Contributor: Mark Lunt

For further advice, please contact your usual HGF representativewith your query or Mark Lunt mlunt@hgf.com.