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July 23, 2014

USPTO Publishes Final Rules for Micro-Entity Status and Fee Schedule

On December 19, 2012, the Patent Office published the final rule: “Changes to Implement Micro Entity Status for Paying Patents Fees” –77 Fed. Reg. 75019–and on January 18, 2013 the final fee schedule is expected to be published (link below). The Micro Entity status rules occupy 16 pages in the Federal Register, including the public comments. The primary meat of the Rules is the discussion of new sections 1.29(a) and  1.29(d) which set forth the requirements of individual inventor/applicants. Since most patent applications will still be filed by inventor/applicants (as opposed to institution/applicants, these are the sections that have the potential to save both individuals and certain institutions a lot of money (for example, a micro-entity can file a request for prioritized examination for only $1000).

Section 1.29(a) contains the involved procedures that permit an individual to assert micro entity status based on income, past filing history, etc., that I cannot believe will be widely used. Section 1.29(d), on the other hand, is much more user friendly, and permits an applicant to claim micro entity status if either (i) the applicant received a majority of his/her income from an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, OR (ii) the applicant has assigned, or is under an obligation by contract or law to assign a license or other ownership interest in the application to such an institution of higher education. The applicant and the assignee (or licensee) must still qualify as a small entity under s. 1.27, but that is not a problem for the average “university.” The qualifying university also cannot itself be the micro-entity.

This would seem to cover the “average professor” who executes the oath and declaration and an assignment to his/her institution, but it rapidly becomes draconian. The definition of institution of higher learning requires that the institution grant a bachelor’s degree or a two-year degree that would qualify students for further education toward a bachelor’s degree. The Office has taken the position that the statutory language excludes “separate non-profit corporation[s], research foundation[s] or other institution[s] that are legally separate from an institution of high education but whose stated mission is to represent that institution of higher education, to act on its behalf, and/or commercialize the [IP] of that institution of higher education.”

In other words, assignment or licensing of an application to an organization such as WARF, the Naval Research Laboratory or the Iowa State University Foundation would not meet the requirements of s. 1.29(d).   Granting a graduate degree is not sufficient.  See comment 12 and response. So assignment directly to a university, such as is required of University of Minnesota researchers, qualifies them for payment of micro entity fees but assignment to a university research foundation does not. I think that WARF, ISURF,  Cornell Research Foundation, University of Virginia Patent Foundation, Salk Institute and many other eminent entities had better consider granting four-year degrees in technology transfer.

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© 2014 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

About the Author

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Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.

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