[Patentpractice] FW: Maintenance Fees - Entity Status Changed by USPTO?
Dale Quisenberry
dale at quisenberrylaw.com
Wed Sep 3 21:05:04 UTC 2025
Thanks, Rick.
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
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From: Rick Neifeld <richardneifeld at gmail.com>
Date: Wednesday, 3 September 2025 at 3:40 pm
To: Dale Quisenberry <dale at quisenberrylaw.com>
Cc: For patent practitioners. This is not for laypersons to seek legal advice. <Patentpractice at oppedahl-lists.com>
Subject: Re: FW: [Patentpractice] Maintenance Fees - Entity Status Changed by USPTO?
Dale (cc to list serve) - Yes. My forms in my zip file available on my website contains a sequence of forms in a single pdf file, and the forms include a SE and plural ME home brew forms. See the document named "D_A_P_SE_ME_IDS_ADS" in wpd, pdf, and rtf formats for your copying and modifying pleasure, in the zip file downloadable from this URl: https://www.neifeld.com/forms.html
The D_A_P_SE_ME_IDS_ADS refers to Dec-Assignment, Power, Small Entity, MicroEntity, Information Disclosure Statement, Application Data Sheet, so that one document includes all those homebrew forms in the sequence they appear in the filename.
I would appreciate anyone using them as templates to suggest improvements (or, g_d forbid, errors). Thanks, RICK
On Wed, Sep 3, 2025 at 4:07 PM Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>> wrote:
Thanks for sharing this, Rick.
I know you have shared various forms in the past.
Do you have a discussion of small entity status in your engagement letter?
Do you have a form letter or email you send the client explain what it means and have them sign off? You mentioned a signature. Is that a hard copy coming back or electronically?
Thanks again for sharing your experience and passing on the torch of knowledge!
Dale
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Wednesday, 3 September 2025 at 3:03 pm
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Rick Neifeld <richardneifeld at gmail.com<mailto:richardneifeld at gmail.com>>
Subject: Re: [Patentpractice] Maintenance Fees - Entity Status Changed by USPTO?
1. I require at least a written acknowledgement from a client (or in the case of a client having a local agent, from the local agent) that they are aware of the small entity status requirements and after factual investigation confirm that the patent is still entitled to small entity status. For direct clients, I normally require a newly signed SE form before making a maintenance fee payment on their behalf.
That does not moot PatentCenter sub slientio having changed entity status, but it puts the factual investigation and conclusions where they should be; with the person having personal knowledge of the facts.
2. I wonder of PatentCenter has implemented some algorithm to automatically remove SE status from all patents owned by an entity if someone pays a MF for one patent owned by that entity at the non SE rate. Call me slightly paranoid of USPTO actions, ever since the DOCX requirement.
On Wed, Sep 3, 2025 at 2:23 PM Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Of course… but I imagine some patentees who use maintenance fee vendors might claim they made an innocent mistake/oversight… but if they have to actively/purposefully change the entity status back to small entity in PatentCrapper, one can’t really claim an innocent oversight.
Hence, why I wonder if the USPTO might be purposefully changing to large entity to force one to have to actively change to small… then if small entity is wrongly claimed, the USPTO can levy the significant penalty and even invalidate the patent.
Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
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F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
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From: Roger Browdy <Roger.Browdy at FisherBroyles.com>
Sent: Wednesday, September 3, 2025 2:09 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: RE: Maintenance Fees - Entity Status Changed by USPTO?
Of course, you are well aware that the rules require that you check that small entity still applies each time to pay a maintenance fee, whether the PTO has previously recognized it as a small entity or not.
Roger L. Browdy
Partner
_____________________________________________
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direct: +1 202-277-5198
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Wednesday, September 3, 2025 8:41 AM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: Re: [Patentpractice] Maintenance Fees - Entity Status Changed by USPTO?
Which btw if this is what the USPTO is doing… it’s a totally sh*tty move as it will require significant bullsh*t paperwork/unbillable time.
Suzannah K. Sundby<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.linkedin.com_in_ssundby_&d=DwMFAg&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=8wFZLFNF4_wLb-PNI6ALwm82yFuMK2gz3L2RESKcBuUxfXHzIFZ0fe1DtRD3HVxE&s=JFys10_4BIgCqV30L_nUUSnym5rCP1KjEcKYVsLJOGc&e=> | Partner
canady + lortz LLP<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.canadylortz.com_&d=DwMFAg&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=8wFZLFNF4_wLb-PNI6ALwm82yFuMK2gz3L2RESKcBuUxfXHzIFZ0fe1DtRD3HVxE&s=SCL5Jt-D2aERaiZrQbVc1EFnEYP-3q0lge0m4PWN4FE&e=>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
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From: Suzannah K. Sundby
Sent: Wednesday, September 3, 2025 8:39 AM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: Maintenance Fees - Entity Status Changed by USPTO?
The first maintenance fee is due in a patent. The client asked me to change it to small entity so their vendor can pay the small entity maintenance fee.
I checked my records and PatentCrapper. The application was filed as small entity and the issue fee was also paid as small entity, and at no time did we change the entity status to Large.
Yet, strangely, PatentCrapper shows the entity status as being Regular Undiscounted.
Has this happened to anyone else?
I wonder if the USPTO has decided to automatically change entity status to large for patentees who are companies (not obviously research institutions) to force one to reassert small entity status when paying maintenance fees… and thereby having grounds for applying the severe penalties for incorrect assertions…
Suzannah K. Sundby<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.linkedin.com_in_ssundby_&d=DwMFAg&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=7yDyUE5lzuruhwIvS68v9eFQKnrJuSrXb1MxDfvR_V8&m=8wFZLFNF4_wLb-PNI6ALwm82yFuMK2gz3L2RESKcBuUxfXHzIFZ0fe1DtRD3HVxE&s=JFys10_4BIgCqV30L_nUUSnym5rCP1KjEcKYVsLJOGc&e=> | Partner
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1050 30th Street, NW
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