USPTO Proposes Rules to Implement the Micro Entity Provision of the America Invents Act | Practical Law

USPTO Proposes Rules to Implement the Micro Entity Provision of the America Invents Act | Practical Law

The USPTO has proposed amendments to the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act. Among other things, the proposed amendments change the rules of practice for patent applications to allow for applicants to claim micro entity status and pay patent fees at the micro entity rate.

USPTO Proposes Rules to Implement the Micro Entity Provision of the America Invents Act

by PLC Intellectual Property & Technology
Published on 29 May 2012 • USA (National/Federal)
The USPTO has proposed amendments to the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act. Among other things, the proposed amendments change the rules of practice for patent applications to allow for applicants to claim micro entity status and pay patent fees at the micro entity rate.
On May 29, 2012, the USPTO issued a notice of proposed rulemaking regarding proposed amendments to the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act. The proposed rules set out the procedures to:
  • Claim micro entity status.
  • Pay patent fees as a micro entity.
  • Provide notification of loss of micro entity status.
  • Correct payments of patent fees erroneously paid in the micro entity amount.
An applicant claiming micro entity status must certify that the applicant:
  • Qualifies as a small entity as defined in Section 1.27, Title 37 of the Code of Federal Regulations.
  • Has not been named as an inventor on more than four previously filed patent applications, excluding provisional or international applications and applications filed in another country.
  • Did not have a gross income exceeding three times the median household income for the calendar year preceding the year the applicable fee is being paid.
  • Has not assigned, granted or conveyed and is under no legal obligation to assign, grant or convey a license or ownership interest in the application to an entity with a gross income exceeding three times the median household income for the preceding calendar year.
Under the proposed rules, certain patent fees will be reduced by 75% for micro entities.
The proposed rules concerning micro entity status for paying patent fees will be published in the Federal Register on May 30, 2012, with comments accepted through July 29, 2012.
For more information on the implementation of other amended USPTO rules in connection with the Leahy-Smith America Invents Act, see Practice Note, Road Map to USPTO Leahy-Smith America Invents Act Implementing Rules.