AIA Update: Micro entity rules to become effective March 19, 2013

On Wednesday, December 19, 2012, the U.S. Patent and Trademark Office (USPTO) published final rules in the Federal Register to implement the micro entity provision of the America Invents Act (AIA). The final rules set forth the procedures for an applicant to claim micro entity status and to pay reduced patents fees as a micro entity. The final rules also cover procedures for an applicant to notify the USPTO of the loss of micro entity status and to correct payments of patent fees erroneously paid in the micro entity amount. The final rules will be effective on March 19, 2013.

• Certain patent fees will be reduced by 75% for micro entities.
  • Applicable fees include filing, searching, examining, issuing, appealing, and maintaining a patent application and patent.
• The term “micro entity” means an applicant who makes a certification that the applicant:
  1. Qualifies as a small entity as defined in 37 CFR 1.27
  2. Has not been named as an inventor on more than four previously filed patent applications, other than:
     • foreign applications
     • provisional applications
     • international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid (i.e., PCT applications that do not go past the international stage)
     • applications resulting from prior employment, 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
  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 by the Internal Revenue Code) exceeding three times the median household income for that preceding calendar year (as most recently reported by the Census Bureau)
  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 does not meet requirement number 3
     NOTE: The USPTO will indicate the required gross income on its web site.
• A micro entity may also be an applicant who certifies that:
  1. The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)), or
  2. The applicant has assigned, granted, conveyed, or is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
     NOTE: The institution of higher education must still qualify as a small entity.
• Claiming micro entity status requires the filing of a certification of entitlement to micro entity status.
  • The USPTO is developing forms to provide such a certification.
  • A micro entity certification need only be filed once in an application or patent, but a fee may be paid in the micro entity amount only if the applicant or patentee is still entitled to micro entity status on the date the fee is paid.
• Each applicant must meet the requirements of this micro entity provision in order to be eligible.
  • The requirements must be reassessed prior to paying any micro entity fee, to ensure that each applicant is still entitled to micro entity status.
• The procedures for notifying the USPTO of loss of micro entity status and correcting payments of patent fees paid erroneously in the micro entity amount follow the same procedures as small entities.

An applicant who qualifies as a micro entity under the procedures outlined in the final rules will be eligible to pay reduced patent fees once the USPTO completes its fee-setting rulemaking. The fee-setting rulemaking is currently ongoing and is projected to be complete in the spring of 2013.

Please contact your Fish & Richardson attorney or [email protected] with any questions or for further information.