[Patentpractice] can we get a REFUND --> we paid large entity fees could have paid small entity fees [US non-provisional]

[Michael Nye]

Bill,

With those facts, yes, a refund request would be proper.

-Michael


On Fri, Jun 13, 2025 at 8:03 AM William Ahmed via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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> Patentpractice at oppedahl-lists.com
>
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>
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