[Patentpractice] can we get a REFUND --> we paid large entity fees could have paid small entity fees [US non-provisional]
William Ahmed
ahmed.william at ymail.com
Fri Jun 13 12:01:34 UTC 2025
Dear List,
BACKGROUND
Recently, a client of ours was spun off by their large-entity parent company.It was a clean break - this former parent company owns no stock and has no license to practice any of our client's patent [not even a non-exclusive license]There are completely new shareholders (angel investors) - the former parent is gone.
Earlier this week, the client's General Counsel related this to me on the phone. I emailed her MPEP 509.02 (Small Entity Status) along with the Small Business Act, and all relevant material.The General Counsel then confirmed that they are currently a small entity, and have been so since April 15, 2025 [the day the spin-off was finalized]
NOTE --> even though the spin-off occurred almost two months ago [04/15/25], I only learned of it this week. Typically, we work primarily with their engineering team (who give the final OK for patent drafts).We only consult with their General Counsel occasionally.
MY QUESTION
On April 29 2025, their engineers gave us the "final OK" to file a new US non-provisional, we did so.At the time, they were a small entity, but simply did not konw.Thus, on April 29, 2025 we intentionally paid filing-fees via Patent Center at large entity rates - we did not know that they are a small entity.
Can we now NOW a refund of the difference between 'large entity' and 'small entity fees]?Our payment at large entity rates was intentional, but based on incorrect information.
If such a refund request IS proper, then YES I know that we must do it before June 29, 2025 [two months after fees were paid at large entity rates]
Wishing everyone a pleasant weekend,Bill
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