[Pct] ISA/US search --> forgot to indicate 'small entity' when filing PCT in RO/IB

[Scott Nielson]

I'm not sure what you need to file with RO/IB, but 37 CFR 1.27(c)(3) says:
(3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in § 1.16(a)<https://www.ecfr.gov/current/title-37/section-1.16#p-1.16(a)>, (b)<https://www.ecfr.gov/current/title-37/section-1.16#p-1.16(b)>, (c)<https://www.ecfr.gov/current/title-37/section-1.16#p-1.16(c)>, (d)<https://www.ecfr.gov/current/title-37/section-1.16#p-1.16(d)>, or (e)<https://www.ecfr.gov/current/title-37/section-1.16#p-1.16(e)>, the small entity transmittal fee set forth in § 1.445(a)(1)<https://www.ecfr.gov/current/title-37/section-1.445#p-1.445(a)(1)> or § 1.1031(a)<https://www.ecfr.gov/current/title-37/section-1.1031#p-1.1031(a)>, the small entity international search fee set forth in § 1.445(a)(2)<https://www.ecfr.gov/current/title-37/section-1.445#p-1.445(a)(2)> to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a)<https://www.ecfr.gov/current/title-37/section-1.492#p-1.492(a)>, will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031<https://www.ecfr.gov/current/title-37/section-1.1031>) will be treated as a written assertion of entitlement to small entity status.
According to this, paying the small entity search fee to RO/IB will be treated as a written assertion of entitlement to small entity status. Now you just need to figure out what to file with RO/IB to get them to acknowledge the small entity status. Jeff's suggestion seems like the first place to start.


Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Jeffrey Semprebon via Pct <pct at oppedahl-lists.com>
Sent: Monday, March 24, 2025 7:18 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Jeffrey Semprebon <jesemprebon at gmail.com>
Subject: Re: [Pct] ISA/US search --> forgot to indicate 'small entity' when filing PCT in RO/IB

I don't know, but I'd be tempted to check the possible "Actions" for the case in ePCT and see whether that's something listed as an option for correcting the Applicant data via a 92bis change.


-Jeff

Jeffrey E. Semprebon
Registered Patent Agent (mechanical) looking for remote work
jesemprebon at gmail.com<mailto:jesemprebon at gmail.com>
72 Myrtle Street
Claremont, New Hampshire 03743

On Mon, Mar 24, 2025 at 8:02 AM William Ahmed via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
Dear List,
We recently filed a PCT in RO/IB -- our request form specified the US search authority.
In our fling, we neglected to indicate that this is applicant a small entity.

We recently received an invitation to pay fees RO/102 -- of course, the fee-total of the RO/102 was based on the 'large entity' search fee for the search portion of the fee-total.

Is it is too late to NOW indicate that this is a small entity, and to pay the 'small entity fee' for this PCT?

Thanks,
Bill
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