<html>
<head>
<meta http-equiv="Content-Type" content="text/html; charset=Windows-1252">
</head>
<body dir="auto">
<div dir="auto">Hi all,</div>
<div dir="auto"><br>
</div>
<div dir="auto">I know that many practitioners, including Carl, will not pay micro entity fees and recommend that clients not file as micro entities using the gross income basis because of the potential pitfalls when doing so. I am not among those individuals,
as I have found it to be valuable for some small, cash-strapped clients.</div>
<div dir="auto"><br>
</div>
<div dir="auto">Here is an issue I recently encountered. I already discussed the issue with the USPTO Office of Patent Legal Administration and confirmed what the official USPTO interpretation is, so this post is more for the benefit of anyone in the group
who files using micro entity status based on gross income than it is an actual question. I decided to send this message because I had already prepared it and I think it may benefit others here. And, of course, I welcome input from anyone who wants to chime
in.</div>
<div dir="auto"><br>
</div>
<div dir="auto">As anyone who is willing to pay micro entity fees should know, paying micro entity fees requires re-evaluation of entity status each time a fee is paid.
<i>See</i> https://www.uspto.gov/patents/laws/micro-entity-status</div>
<div dir="auto"><br>
</div>
<div dir="auto">Because establishing 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>
<div dir="auto"><br>
</div>
<div dir="auto">Best,</div>
<div dir="auto">Umair</div>
<div dir="auto"><br>
</div>
<div dir="auto">-----</div>
<div dir="auto">Umair A. Qadeer</div>
<div dir="auto">Registered Patent Attorney</div>
<div dir="auto">Qadeer LLC</div>
<div dir="auto">312.248.3020</div>
<div dir="auto">umair@qadeerip.com</div>
<div dir="auto"><br>
</div>
<div dir="auto"><br>
</div>
<div dir="auto">CONFIDENTIALITY NOTICE: This e-mail, and any attachments thereto, is intended only for the designated recipient. It may contain legally privileged or confidential information and may be subject to the attorney-client privilege or other privilege.
If you have received this e-mail in error, please immediately return it to the sender, delete it, and destroy any copies. If you have any questions, please contact the sender, Umair A. Qadeer, by e-mail at umair@qadeerip.com or by telephone at (312) 248-3020.</div>
<div dir="auto"><br>
</div>
</body>
</html>