Proposed Rules for Micro Entities

By Jason Rantanen

As part of the America Invents Act, Congress created the new "micro entity" category of patent applicants.  See Public Law 112-29, 125 Stat. 283, Section 10(g) (2011).  Similar to small entity status, micro entities are entitled to a reduction of patent application fees (75% for micro entities versus 50% for small entities).  "Micro entity" is a bit of a misnomer: an applicant can qualify as a micro entity either by having an income of less than three times the median household income (approximately $50,000 based on 2010 incomes) or by being under an obligation to assign or license the application to an institution of higher education.  The latter route might be particularly attractive to universities, as it enables micro entity status for most university-affiliated researchers.  

The USPTO recently published a set of proposed regulations for establishing micro entity status.  In large part, these regulations would implement the micro entity status requirements set out in the AIA, while providing some further clarification in a few areas, such as multi-inventor applications (all must meet the micro entity requirements).

The Federal Register publication also notes some complications arising due to the severance of "applicant" from "inventor."  Prior to the AIA, the two terms were synonymous.  After September 16, 2012, however, it is possible for an application to be made by someone other the inventor.  The micro entity section of the AIA uses the term "applicant;" however, as part of the proposed rulemaking the PTO is seeking comments on whether "inventor" should be used in place of "applicant" at any point in the rules for establishing micro entity status.

Finally, keep in mind that even once these proposed rules are finalized, the discount will not be available until the PTO sets or adjusts patent fees under the fee setting authority provision of the AIA, something that it indicates will not formally occur until around March 2013. 

The proposed rules are available here:  Download 2012-12971  The comment deadline date is July 30, 2012.

12 thoughts on “Proposed Rules for Micro Entities

  1. 12

    I think, in the end, this question about inventorship versus being the applicant is going to be interesting. Remember, 102(f) was removed, and 118 amended to weaken the requirements for declarations. We were assured that only inventors still could get patents, due to other statutes that imply inventorship, as well as the Constitutional Patent and Copyright clause. I found this suspect, because it was done so explicitly.

    Now, the micro entity aspect is a bit different, since the theory is that these are essentially sole inventors or very small companies. Once you get a couple of patents under your belt, you are out of the program. Still, and argument could be made that you need to protect the small company with a recalcitrant inventor (but, then, how do they get ownership in the first place, without an employment agreement?)

  2. 11

    I am not quite sure what you are trying to say, but the gist seems to be that the AIA didn’t improve the patent system, and, indeed, I would suggest the opposite – that it was expressly designed by its advocates to dramatically weaken patent protection to protect large companies that make a practice of appropriating the inventions of others.

    The $100+ million spent lobbying the legislation was, I am sure, justified by those companies looking at the patent infringement damages they were seeing, and figuring that their lobbying costs were chump change in comparison.

  3. 10

    Thats what this aia is no improvement on the existing to make the system usable and more regression instead of progression until the ststem is devoid of smart inventors capable of genuine parent conceptions

  4. 8

    True not allot but what about the worlds only inventor of signifience arguably without me were going nowhere I am to old to be a student and everything in the patent office is backdated and corruptly file incerted then patent issued to the wrong inventors. 40 methods of cheating true inventors and counting is no incentive to create anything

  5. 5

    I truly hope this was not the carrot that got many university groups on board with AIA. Saving a few hundred bucks per patent should really not make that big of a difference to most schools.

  6. 3

    They need to establish far more incentatives to create for the indegent as intellegent minds are a terrable thing to waste. Free filing and issues for top marketable patents are needed in sufficently indegent cases. Low or no cost yearly database files are critical for maintaining secrecy in patent perpration. Immediate novelty check including secrecty files and adversarial lockering are needed protect against internal files tampering destroying the incentive to create in valuable only patents.

  7. 1

    “the discount will not be available until the PTO sets or adjusts patent fees under the fee setting authority provision of the AIA”

    I guess first the PTO will double the fees and then allow inventors to claim micro-entity status.

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