[Patentpractice] application limit for micro entity status

[Rick Neifeld]

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.
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.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com
and richardneifeld at gmail.com
Web: https://neifeld.com/
This is a confidential communication of counsel. If you are not the 
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On 2/29/2024 2:52 PM, Umair A. Qadeer via Patentpractice wrote:
> 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.”
>
> 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.”
>
> 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.
>
> 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.
>
> 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.
>
> 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.
>
> 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. :)
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