<!DOCTYPE html>
<html>
<head>
<meta http-equiv="Content-Type" content="text/html; charset=UTF-8">
</head>
<body text="#0000ff" bgcolor="#FFFFFF">
<font face="Times New Roman">Umair - What I suggest you do is
require the individual applicant entity to sign a micro entity
certification which spells out on the certification form the
requirements for entitlement to micro entity status, each time a
fee is required for a USPTO filing. For example, using a form like
the one in my forms package, for that purpose.<br>
Yes of course the PTO requires a registered practitioner to sign
for artificial legal entities, but that does not preclude the
practitioner from requiring the signature of the representative of
the artificial legal entity applicant. As an added safety, file
the certification signed by you and the client representative
whenever a fee is paid to the USPTO, so the proof that you
complied with the duty to inquire is in the official record. And
do not forget to charge the client for each such certification.<br>
</font>
<div class="moz-signature">
<p>Best regards, Rick Neifeld, Ph.D., Patent Attorney<br>
Neifeld IP Law PLLC<br>
9112 Shearman Street, Fairfax VA 22032-1479, United States<br>
Office: 1-7034150012<br>
Mobile: 1-7034470727<br>
Fax: 1-5712810045<br>
Email: <a href="mailto:rneifeld@neifeld.com"
class="moz-txt-link-freetext">rneifeld@neifeld.com</a><br>
and <a href="mailto:richardneifeld@gmail.com"
class="moz-txt-link-freetext">richardneifeld@gmail.com</a><br>
Web: <a href="https://neifeld.com/"
class="moz-txt-link-freetext">https://neifeld.com/</a><br>
This is a confidential communication of counsel. If you are not
the intended recipient, delete this email and notify the sender
that you did so.</p>
</div>
<div class="moz-cite-prefix">On 2/29/2024 2:52 PM, Umair A. Qadeer
via Patentpractice wrote:<br>
</div>
<blockquote type="cite"
cite="mid:MW5PR13MB588060B98CDEAB7EAE86540FC85F2@MW5PR13MB5880.namprd13.prod.outlook.com">
<div dir="auto">ing micro entity status on a gross income basis
requires that each inventor has not filed more than four U.S.
non-provisional patent applications, filing of a fifth U.S.
non-provisional patent application means the applicant will no
longer be entitled to micro entity status, at least for future
patent applications. However, the USPTO interpretation is that
micro entity status remains in force for the applications
already filed and any patents issuing therefrom, so long as the
income and other requirements for micro entity status are met.
M.P.E.P. § 509.04(a) states: “the filing of a future sixth
application will not jeopardize entitlement to micro entity
status in any of the five applications already filed.”</div>
<div dir="auto"><br>
</div>
<div dir="auto">This seems on its face to contradict the USPTO
guidance on re-evaluating micro entity status each time a fee is
paid, since the applicant is no longer entitled to micro entity
status after the fifth application is filed. However, the USPTO
is interpreting the phrase “previously filed patent
applications” in the requirement of 37 C.F.R. § 1.29(a)(2) that
the applicant has “not been named as the inventor or a joint
inventor on more than four previously filed patent applications”
to mean “previously filed patent applications filed before this
application was filed” rather than “previously filed patent
applications filed before today.”</div>
<div dir="auto"><br>
</div>
<div dir="auto">That interpretation seems like a stretch to me.
However, the USPTO Office of Patent Legal Administration
confirmed that this question has been asked before and this is
how they interpret the requirement. There is no other guidance
on this issue in the statute or regulations.</div>
<div dir="auto"><br>
</div>
<div dir="auto">Thus, for the purpose of fee payments after a
fifth application is filed, such as the issue fee or maintenance
fees in one of the first five applications, according to the
USPTO it is correct to still pay micro entity fees for the
applications/patents that qualified at the time of filing and
otherwise still qualify on the basis of income and the other
requirements of 37 C.F.R. § 1.29.</div>
<div dir="auto"><br>
</div>
<div dir="auto">I am well aware that the M.P.E.P. has been known
to get it wrong, and the safer approach would simply be to pay
small entity fees instead. But for an individual small inventor
still on a tight budget and holding out hope for funding, any
fee reduction is still generally valuable.</div>
<div dir="auto"><br>
</div>
<div dir="auto">To my knowledge, no court has opined on the
contours of micro entity status to date. As such, it would
appear that relying on USPTO interpretation as set forth in the
M.P.E.P. and confirmed by the USPTO is a reasonable approach,
and would constitute a good faith error rather than fraud if the
interpretation is later deemed to be incorrect by a court.</div>
<div dir="auto"><br>
</div>
<div dir="auto">Of course for the time I spent researching and
composing my thoughts on this, I probably could have made a few
small entity payments out of pocket on behalf of the client, but
that's a different matter. :)</div>
</blockquote>
<br>
</body>
</html>