Patent Law FAQ

If you don’t pay the issue fee for your patent application, it will be considered abandoned. According to MPEP 203.05, one of the ways an application can become abandoned is:

“for failure to pay the issue fee”

The MPEP refers to sections 711 to 711.05 for more details on this topic. It’s crucial to pay the issue fee on time to prevent your application from being abandoned after all the effort put into the patent prosecution process.

To learn more:

• issue fee
• patent fees
• application abandonment

Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter:

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

This means that applicants must take specific steps to maintain small entity status in a continuation application:

1. Review Eligibility: Ensure that the applicant still qualifies for small entity status under the current rules.
2. New Assertion: File a new assertion of entitlement to small entity status in the continuation application.
3. Timing: This assertion should be made at the time of filing the continuation application or with the first fee payment.

It’s important to note that improperly claiming small entity status can have serious consequences, including the patent being held unenforceable. Therefore, applicants should carefully review their status before making a new assertion in a continuation application.

For micro entity status, the requirements are even more stringent:

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

Applicants should be diligent in properly asserting and maintaining their entity status throughout the patent application process, including when filing continuation applications.

For more information on continuation application, visit: continuation application.

For more information on patent fees, visit: patent fees.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

Yes, failure to pay the issue fee can result in an abandoned patent application. MPEP 203.05 explicitly states that an abandoned application includes one removed from the Office docket for failure to pay the issue fee (MPEP § 711 to § 711.05). This means that even if an application has been approved for issuance, if the applicant fails to pay the required issue fee within the specified time frame, the application will be considered abandoned.

For more detailed information on this topic, you can refer to MPEP § 711 to § 711.05.

Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter:

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

This means that applicants must take specific steps to maintain small entity status in a continuation application:

1. Review Eligibility: Ensure that the applicant still qualifies for small entity status under the current rules.
2. New Assertion: File a new assertion of entitlement to small entity status in the continuation application.
3. Timing: This assertion should be made at the time of filing the continuation application or with the first fee payment.

It’s important to note that improperly claiming small entity status can have serious consequences, including the patent being held unenforceable. Therefore, applicants should carefully review their status before making a new assertion in a continuation application.

For micro entity status, the requirements are even more stringent:

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

Applicants should be diligent in properly asserting and maintaining their entity status throughout the patent application process, including when filing continuation applications.

For more information on continuation application, visit: continuation application.

For more information on patent fees, visit: patent fees.

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

Yes, failure to pay the issue fee can result in an abandoned patent application. MPEP 203.05 explicitly states that an abandoned application includes one removed from the Office docket for failure to pay the issue fee (MPEP § 711 to § 711.05). This means that even if an application has been approved for issuance, if the applicant fails to pay the required issue fee within the specified time frame, the application will be considered abandoned.

For more detailed information on this topic, you can refer to MPEP § 711 to § 711.05.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

The fee for recording documents with the USPTO varies depending on the method of submission and the type of intellectual property involved. According to MPEP 302.06:

For patents:

• If submitted electronically: $0 (as of 2019)
• If submitted on paper or via facsimile: Fee set in 37 CFR 1.21(h)(2)

For trademarks:

• Fee set in 37 CFR 2.6(b)(6)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

To learn more:

• USPTO fees
• document recording
• patent fees
• trademark fees
• electronic submission

The USPTO has different fee structures for recording patent and trademark documents. According to MPEP 302.06:

• For patents: The fee is set in 37 CFR 1.21(h)
• For trademarks: The fee is set in 37 CFR 2.6(b)(6)

Additionally, for patent documents:

• Electronic submissions currently have a $0 fee
• Paper or fax submissions have a fee set in 37 CFR 1.21(h)(2)

It’s important to note that trademark fees may differ and do not have the same $0 electronic submission option as patents. Always check the current USPTO fee schedule for the most up-to-date information.

To learn more:

• USPTO fees
• patent fees
• trademark fees
• fee comparison

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.

To learn more:

• small entity status
• patent fees
• patent application
• filing fees

To determine small entity status for a business, several steps should be taken:

• Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
• Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
• Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
• If rights have been transferred, conduct the same review for each other entity involved.

The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”

To learn more:

• small entity status
• small business
• patent fees
• business size standards

If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’

This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:

• Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
• Pay the fee amount for a non-small entity

To learn more:

• small entity status
• change in status
• patent fees
• USPTO notification

To learn more:

• status change

A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:

• A person
• A small business concern
• A nonprofit organization

Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.

To learn more:

• small entity
• patent fees
• fee reduction
• patent application

To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.

MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”

This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.

To learn more:

• small entity
• micro entity status
• institution of higher education
• patent fees

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.

To learn more:

• small entity status
• patent fees
• patent application

A small business concern, for the purpose of paying reduced patent fees, is defined as follows:

A small business concern as used in this paragraph means any business concern that:

• Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
• Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.

The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.

To learn more:

• small business concern
• patent fees
• small entity status
• SBA size standards

The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.

Key points about the form:

• It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
• It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
• Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.

Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.

To learn more:

• Credit Card Payment Form
• PTO-2038
• USPTO payments
• patent fees
• trademark fees

The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:

37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.

The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.

Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:

• Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
• Pay the exact small entity basic filing fee, basic national fee, or individual designation fee

As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”

To learn more:

• small entity status
• patent fees
• patent application

When notifying the USPTO of a loss of micro entity status, the following requirements must be met:

• The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
• The notification must be signed by a party identified in 37 CFR 1.33(b).
• A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.

As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.

To learn more:

• micro entity status
• notification
• USPTO
• patent fees
• patent application

A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:

• Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
• Make a minimum deposit of $1,000 for general use
• Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies

As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).

To learn more:

• USPTO
• deposit account
• patent fees
• patent services

According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:

• Each type of fee erroneously paid as a micro entity
• The current fee amount for a small or non-small entity
• The micro entity fee actually paid and the date of payment
• The deficiency owed amount for each fee
• The total deficiency payment owed

The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.

To learn more:

• Micro Entity
• Fee Itemization
• Patent Fees
• USPTO Procedures

When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):

A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].

To change to regular (unreduced) fee status, you must either:

• File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
• File a separate notification of loss of entitlement to small entity status.

To learn more:

• micro entity status
• small entity status
• USPTO
• patent fees
• entity status change

What happens if there are insufficient funds in my USPTO deposit account?

If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:

• The USPTO will treat the fee as unpaid
• Any associated filing may be considered incomplete
• You may receive a notice of insufficient funds

The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)

To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.

To learn more:

• USPTO deposit account
• insufficient funds
• overdrawn account
• patent fees

What happens if I overpay a patent fee to the USPTO?

If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’

To request a refund:

1. File a petition for refund within 2 years of the payment date
2. Clearly explain the reason for the overpayment
3. Provide evidence of the overpayment

It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.

To learn more:

• overpayment
• refund
• patent fees
• USPTO
• petition for refund

What happens if I overpaid fees due to incorrect micro entity status?

If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:

“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”

To request a refund:

• File a compliant micro entity certification
• Submit a timely refund request
• Ensure you meet the time constraints specified in 37 CFR 1.29(k)

It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.

To learn more:

• micro entity status
• fee overpayment
• refund request
• patent fees

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

If you erroneously pay small entity fees in good faith, you can correct the error by:

• Submitting a separate deficiency payment for each application or patent
• Itemizing the deficiency payment with specific details
• Paying the full deficiency amount owed

As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”

To learn more:

• small entity status
• patent fees
• error correction

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.

MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”

The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):

1. Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
2. Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).

Applicants should use this form to properly certify their micro entity status based on an institution of higher education.

To learn more:

• micro entity status
• certification form
• institution of higher education
• patent fees

A USPTO deposit account can be used to pay various fees related to patent applications and services. According to the MPEP:

Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees.

Specifically, fees that can be charged include:

• Filing fees (37 CFR 1.16)
• Processing fees (37 CFR 1.17)
• Issue fees (37 CFR 1.18, subject to certain conditions)
• Appeal fees
• International application fees
• Petition fees

However, fees under 37 CFR 1.19 (document supply fees), 1.20 (post-issuance fees), and 1.21 (miscellaneous fees) generally cannot be charged through a general authorization, with some exceptions.

To learn more:

• USPTO
• deposit account
• patent fees
• fee payment

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):

• Qualify as a small entity
• Not have been named as an inventor on more than four previously filed patent applications
• Not have a gross income exceeding three times the median household income in the preceding calendar year
• Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit

The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“

To learn more:

• micro entity
• gross income
• patent fees
• small entity
• patent applications

To establish micro entity status based on an institution of higher education, an applicant must meet two main requirements:

1. Qualify as a small entity as defined in 37 CFR 1.27
2. Meet one of the following criteria:
   • The applicant’s employer, from which they obtain the majority of their income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, or
   • The applicant has assigned, granted, conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest in the application to such an institution of higher education.

As stated in MPEP 509.04(b): “An applicant for micro entity status under the ‘institution of higher education’ basis set forth in 37 CFR 1.29(d) must satisfy two requirements.”

To learn more:

• micro entity
• institution of higher education
• patent fees
• small entity

What are the income limitations for qualifying as a micro entity?

To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:

“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))

For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.

To learn more:

• micro entity
• income limitations
• patent fees
• USPTO

What are the consequences of submitting insufficient fees for a patent application?

Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:

“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”

This means:

• Your application won’t receive a filing date until the correct fees are paid
• This delay could affect your priority date
• If not corrected promptly, the application may be considered abandoned

It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.

To learn more:

• patent fees
• insufficient fees
• filing date
• incomplete application

What are the accepted payment methods for patent fees?

The USPTO accepts various payment methods for patent fees:

• Credit or debit card
• Electronic funds transfer (EFT)
• Deposit account
• Check or money order

As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.

To learn more:

• patent fees
• payment methods
• USPTO
• credit card
• electronic funds transfer
• deposit account

The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:

37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.

However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:

• A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
• In later submissions, ‘filing fee(s)’ would also cover surcharges.
• A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.

The key is to provide enough information for the USPTO to understand the purpose of the payment.

To learn more:

• fee itemization
• USPTO payments
• patent fees
• trademark fees

According to MPEP 509.02, fees for small entities are reduced by 50% for most patent-related fees. The MPEP states:

The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20).

Additionally, certain PCT international stage fees are also eligible for the 50% reduction for small entities.

To learn more:

• patent fees
• fee reduction
• small entity
• USPTO fees

Once small entity status is established in an application or patent, it remains in effect until:

• The issue fee is due, or
• Any maintenance fee is due

At these points, a new determination of entitlement to small entity status is required. As stated in 37 CFR 1.27(g)(1): “Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.”

To learn more:

• small entity status
• patent fees
• patent maintenance

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

Once small entity status is established in an application or patent, you can continue to pay fees as a small entity until the issue fee is due or any maintenance fee is due. This is stated in 37 CFR 1.27(g)(1): ‘Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.’

To learn more:

• small entity status
• patent fees
• maintenance fees
• issue fees

The gross income limit for micro entity status is determined as follows:

• It is set at three times the median household income for the preceding calendar year, as reported by the Bureau of the Census.
• The USPTO publishes the current maximum qualifying gross income on their website.
• This limit applies to each applicant, inventor, and joint inventor individually.

The MPEP clarifies: “At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the ‘maximum qualifying gross income’ posted on the USPTO website.“

It’s important to note that gross income means total income, not adjusted gross income. The MPEP states: “‘Gross income’ and ‘adjusted gross income’ are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is ‘gross income’ – not ‘adjusted gross income’ that matters.“

To learn more:

• micro entity
• gross income limit
• patent fees
• USPTO
• median household income

The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:

The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.

To calculate the total deficiency payment:

1. Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
2. Subtract the micro entity fee amount previously paid
3. Sum up all individual deficiency amounts

This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.

To learn more:

• Micro Entity
• Fee Calculation
• Patent Fees
• USPTO Procedures

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

An ‘institution of higher education’ for micro entity status purposes is defined according to Section 101(a) of the Higher Education Act of 1965. The key criteria include:

• Located in any U.S. state or territory
• Admits students with secondary education or equivalent
• Authorized to provide post-secondary education
• Offers bachelor’s degrees or at least 2-year programs toward such degrees
• Is a public or non-profit institution
• Is accredited or pre-accredited by a recognized agency

As stated in MPEP 509.04(b): “Section 101(a) of the Higher Education Act of 1965 defines what is meant by ‘institution of higher education’ in the context of 37 CFR 1.29(d).”

To learn more:

• institution of higher education
• micro entity
• Higher Education Act
• patent fees

The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:

35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

Key points about USPTO refunds for credit card payments:

• Refunds are processed as credits to the original credit card account used for payment.
• The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
• For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.

It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.

To learn more:

• USPTO refunds
• credit card payments
• fee refunds
• patent fees
• trademark fees

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

Paying a small entity fee has significant implications for certifying small entity status. According to MPEP 509.03(a), “Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b).” This means that simply paying the small entity fee, even without a specific written assertion, activates the self-certification requirement. Applicants should be aware that this payment invokes the certification provisions, regardless of whether they are a practitioner or non-practitioner.

To learn more:

• small entity status
• patent fees
• self-certification
• patent application

Licensing can significantly impact small entity status for patent fees. The MPEP provides specific guidance on this matter:

Rights conveyed by an applicant or patentee to a Government agency are not considered to be license for purposes of this paragraph. A Government agency includes any agency of the Federal Government or military department of the Government.

This means that licensing to a government agency does not affect small entity status. However, licensing to other entities can impact your status:

• If you license rights to a large entity, you may lose your small entity status.
• Exclusive licenses to large entities typically disqualify you from small entity status.
• Non-exclusive licenses may not affect your status, depending on the terms.

It’s crucial to review any licensing agreements carefully and consult with a patent attorney to determine how they might affect your small entity status.

To learn more:

• licensing
• small entity status
• patent fees
• government agency

How does employment at an institution of higher education affect micro entity status?

Employment at an institution of higher education can provide a pathway to micro entity status. The MPEP states:

“A micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.” (MPEP 509.04(d))

This means that if you are employed by a qualifying institution of higher education and receive the majority of your income from it, or if you have assigned or are obligated to assign your rights in the application to such an institution, you may be eligible for micro entity status. This provision can be particularly beneficial for academic researchers and inventors.

To learn more:

• micro entity
• higher education
• patent fees
• USPTO

How does claiming small entity status affect patent fees?

Claiming small entity status can significantly reduce patent fees. According to MPEP 509.03, “Claiming small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).” This means that small entities, such as independent inventors, small businesses, and nonprofit organizations, can pay reduced fees for many patent-related services, typically 50% of the standard fee. However, it’s important to ensure eligibility before claiming this status to avoid potential issues later in the patent process.

To learn more:

• small entity status
• patent fees
• fee reduction
• USPTO

A general authorization allows the USPTO to charge certain fees to your deposit account without requiring specific authorization for each fee. The MPEP states:

A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.

Key points about general authorizations:

• They can cover fees under 37 CFR 1.16 and 1.17
• Fees under 37 CFR 1.19, 1.20, and 1.21 are generally not covered
• Issue fees (37 CFR 1.18) require a separate authorization after the notice of allowance
• The authorization should be clear and unambiguous to avoid misinterpretation

Always ensure your deposit account has sufficient funds to cover authorized fees to avoid potential application abandonment or additional expenses.

To learn more:

• USPTO
• deposit account
• fee authorization
• patent fees

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

How do I correct an error in micro entity status if I underpaid fees?

If you erroneously paid fees as a micro entity when you were not entitled to that status, resulting in an underpayment, you need to take the following steps:

• Submit a written assertion of small entity status (if eligible) or a written assertion to establish non-small entity status.
• Pay the fee deficiency, which is the difference between the amount paid and the amount due.

As stated in MPEP 509.04(f): “A written assertion to establish non-small entity status must be accompanied by the difference between the current amount due and the amount previously paid.”

It’s important to correct the error promptly to avoid potential issues with your patent application or granted patent.

To learn more:

• micro entity status
• fee correction
• underpayment
• patent fees

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

How can I request a refund for my USPTO deposit account?

To request a refund for your USPTO deposit account, you need to follow these steps:

• Submit a written request to the USPTO Office of Finance
• Include your deposit account number and the amount to be refunded
• Provide a detailed explanation for the refund request

The MPEP states: “A refund to a deposit account may be made on request to the Office of Finance.” (MPEP 509.01)

It’s important to note that refunds are typically processed for overpayments or erroneous charges. The USPTO will review your request and determine if a refund is warranted based on the circumstances provided in your explanation.

To learn more:

• USPTO deposit account
• refund request
• Office of Finance
• patent fees

To regain micro entity status after losing it, you must file a new certification of entitlement to micro entity status. As stated in MPEP 509.04(e):

Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.

This means you must:

• Ensure you meet the criteria for micro entity status as defined in 37 CFR 1.29(a) or 1.29(d)
• File a new certification form (PTO/SB/15A or PTO/SB/15B) in the application or patent
• Meet all other requirements for micro entity status

To learn more:

• micro entity status
• USPTO
• patent fees
• certification
• entity status change

How can I pay patent fees to the USPTO?

The USPTO offers several methods for paying patent fees. According to MPEP 509:

“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”

Here’s a breakdown of these payment methods:

• Credit Card: Accepted online or by mail/fax using Form PTO-2038
• Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
• Check or Money Order: Made payable to the Director of the USPTO
• Deposit Account: A pre-established account with the USPTO
• Cash: Only for in-person payments at the USPTO office

For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.

To learn more:

• patent fees
• USPTO payment methods
• credit card
• electronic funds transfer
• deposit account

To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:

• Submitting a separate deficiency payment for each application or patent
• Providing an itemization of the total deficiency payment
• Paying the deficiency owed

The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity. This means the process is similar to correcting small entity status errors.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

How can I correct an error in micro entity status if I’m no longer eligible?

If you discover that you’re no longer eligible for micro entity status, you should promptly notify the USPTO and pay the deficiency in fees. The MPEP states:

“A notification of loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.” (MPEP 509.04(f))

To correct the error:

• File a notification of loss of entitlement to micro entity status
• Pay the deficiency between the micro entity fees paid and the fees that should have been paid
• Include any required surcharge for the late payment of the fee deficiency

It’s crucial to address this promptly to avoid potential issues with your patent application or granted patent.

To learn more:

• micro entity status
• fee deficiency
• patent fees
• USPTO notification

Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’

To correct the error, you must:

• Submit a separate deficiency payment for each application or patent
• Provide an itemized list of the fees paid in error
• Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)

To learn more:

• small entity status
• error correction
• patent fees
• USPTO procedures

Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):

Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.

This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

No, paying a fee in a non-micro entity amount does not automatically change your entity status. According to MPEP 509.04(e):

Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.

To properly notify the USPTO of a change in entity status, you must file a separate notification in the application or patent. This notification must be filed prior to or at the time of paying any fee after the date on which micro entity status is no longer appropriate.

To learn more:

• micro entity status
• USPTO fees
• entity status change
• patent fees

Can small entity status be changed during the life of a patent?

Yes, small entity status can change during the life of a patent. The MPEP 509.03 provides guidance on this:

Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

Key points to remember:

• Status can change due to mergers, acquisitions, or licensing agreements.
• The USPTO must be notified of any change before paying the issue fee or maintenance fees.
• If status changes from small to large entity, future fees must be paid at the higher rate.
• Conversely, if an entity becomes eligible for small entity status, they can claim it for future fee payments.

It’s important to regularly review your entity status and update the USPTO as necessary to ensure compliance and proper fee payment.

To learn more:

• small entity status
• patent fees
• USPTO
• status change

Can I retroactively claim micro entity status for previously paid fees?

No, you cannot retroactively claim micro entity status for fees that have already been paid. The MPEP clearly states:

“A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.” (MPEP 509.04(f))

This means:

• Micro entity status must be established before or at the time of paying fees at the micro entity rate
• You cannot request a refund for the difference between standard fees and micro entity fees for payments made before establishing micro entity status
• Future fees can be paid at the micro entity rate once status is properly established

To benefit from micro entity status, ensure you file the certification before paying any fees you wish to pay at the reduced rate.

To learn more:

• micro entity status
• patent fees
• USPTO fee policy
• retroactive claims

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

Can I correct micro entity status errors retroactively?

Yes, you can correct micro entity status errors retroactively, but there are specific rules and time limitations to consider. According to MPEP 509.04(f):

“Errors in micro entity status may be rectified by filing a notification of a change in status … and paying the required fee deficiency.”

However, the ability to make retroactive corrections is subject to time constraints:

• For underpayments: You can correct the error at any time by paying the fee deficiency.
• For overpayments: You must file a micro entity certification and request a refund within the time period set in 37 CFR 1.29(k), which is generally within three months of the fee payment.

It’s crucial to address any status errors promptly to maintain the validity of your patent application or granted patent and to ensure compliance with USPTO regulations.

To learn more:

• micro entity status
• retroactive correction
• patent fees
• USPTO regulations

No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:

Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).

This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.

According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.

To learn more:

• foreign universities
• micro entity status
• institution of higher education
• patent fees

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

No, for-profit universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. One of the requirements for an institution of higher education under the Higher Education Act of 1965 is that it must be non-profit.

MPEP 509.04(b) states: “One of the requirements for an ‘institution of higher education’ under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

This means that employees or those who have assigned rights to for-profit universities cannot claim micro entity status on this basis.

To learn more:

• for-profit universities
• micro entity status
• institution of higher education
• patent fees

Can a small business qualify for micro entity status?

Yes, a small business can potentially qualify for micro entity status, but there are specific requirements to meet. The MPEP outlines two main paths for small businesses:

1. Income-based qualification: If the small business’s income does not exceed three times the median household income in the preceding calendar year, it may qualify.
2. Institution of higher education qualification: If the small business has assigned, granted, conveyed, or is under obligation to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.

The MPEP states:

“An applicant that qualifies as a micro entity under either the gross income basis or the institution of higher education basis can file a certification of micro entity status on either basis (but not both).”

It’s important to note that all parties involved (applicants, inventors, and joint inventors) must meet the requirements. For more details, refer to MPEP 509.04.

To learn more:

• micro entity
• small business
• patent applications
• USPTO

To learn more:

• patent fees

Yes, nonprofit organizations can qualify for small entity status under certain conditions. According to 37 CFR 1.27(a)(3), a nonprofit organization that qualifies for small entity status is one that:

• Has not assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity
• Is either:
  • A university or other institution of higher education
  • An organization described in section 501(c)(3) of the Internal Revenue Code and exempt from taxation under 501(a)
  • A nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state
  • A foreign organization that would qualify under the above if it were located in the U.S.

It’s important to note that government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations for small entity status purposes.

To learn more:

• nonprofit organization
• small entity status
• patent fees
• USPTO

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:

37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.

The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.

Key points about the form:

• It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
• It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
• Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.

Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.

To learn more:

• Credit Card Payment Form
• PTO-2038
• USPTO payments
• patent fees
• trademark fees

What happens if I overpay a patent fee to the USPTO?

If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’

To request a refund:

1. File a petition for refund within 2 years of the payment date
2. Clearly explain the reason for the overpayment
3. Provide evidence of the overpayment

It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.

To learn more:

• overpayment
• refund
• patent fees
• USPTO
• petition for refund

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

What are the consequences of submitting insufficient fees for a patent application?

Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:

“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”

This means:

• Your application won’t receive a filing date until the correct fees are paid
• This delay could affect your priority date
• If not corrected promptly, the application may be considered abandoned

It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.

To learn more:

• patent fees
• insufficient fees
• filing date
• incomplete application

What are the accepted payment methods for patent fees?

The USPTO accepts various payment methods for patent fees:

• Credit or debit card
• Electronic funds transfer (EFT)
• Deposit account
• Check or money order

As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.

To learn more:

• patent fees
• payment methods
• USPTO
• credit card
• electronic funds transfer
• deposit account

The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:

37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.

However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:

• A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
• In later submissions, ‘filing fee(s)’ would also cover surcharges.
• A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.

The key is to provide enough information for the USPTO to understand the purpose of the payment.

To learn more:

• fee itemization
• USPTO payments
• patent fees
• trademark fees

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:

35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

Key points about USPTO refunds for credit card payments:

• Refunds are processed as credits to the original credit card account used for payment.
• The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
• For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.

It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.

To learn more:

• USPTO refunds
• credit card payments
• fee refunds
• patent fees
• trademark fees

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

How can I pay patent fees to the USPTO?

The USPTO offers several methods for paying patent fees. According to MPEP 509:

“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”

Here’s a breakdown of these payment methods:

• Credit Card: Accepted online or by mail/fax using Form PTO-2038
• Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
• Check or Money Order: Made payable to the Director of the USPTO
• Deposit Account: A pre-established account with the USPTO
• Cash: Only for in-person payments at the USPTO office

For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.

To learn more:

• patent fees
• USPTO payment methods
• credit card
• electronic funds transfer
• deposit account

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.

To learn more:

• small entity status
• patent fees
• patent application
• filing fees

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

To determine small entity status for a business, several steps should be taken:

• Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
• Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
• Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
• If rights have been transferred, conduct the same review for each other entity involved.

The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”

To learn more:

• small entity status
• small business
• patent fees
• business size standards

If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’

This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:

• Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
• Pay the fee amount for a non-small entity

To learn more:

• small entity status
• change in status
• patent fees
• USPTO notification

To learn more:

• status change

A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:

• A person
• A small business concern
• A nonprofit organization

Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.

To learn more:

• small entity
• patent fees
• fee reduction
• patent application

To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.

MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”

This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.

To learn more:

• small entity
• micro entity status
• institution of higher education
• patent fees

The non-electronic filing fee is an additional fee charged for patent applications not filed by electronic means. This fee was established by the Leahy-Smith America Invents Act and is codified in 37 CFR 1.16(t).

The MPEP states: Section 10(h) of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act) provides that an additional fee of $400 ($200 for a small entity) shall be established for each application for an original (i.e., non-reissue) patent, except for a design, plant, or provisional application, not filed by electronic means.

This fee applies to:

• Applications under 35 U.S.C. 111(a) filed on or after November 15, 2011, other than by the USPTO patent electronic filing system.
• International applications filed with the USPTO as receiving Office on or after November 15, 2011, as part of the transmittal fee.

To learn more:

• non-electronic filing fee
• patent fees
• electronic filing
• USPTO fees

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The fee for recording documents with the USPTO varies depending on the method of submission and the type of intellectual property involved. According to MPEP 302.06:

For patents:

• If submitted electronically: $0 (as of 2019)
• If submitted on paper or via facsimile: Fee set in 37 CFR 1.21(h)(2)

For trademarks:

• Fee set in 37 CFR 2.6(b)(6)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

To learn more:

• USPTO fees
• document recording
• patent fees
• trademark fees
• electronic submission

The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.

To learn more:

• small entity status
• patent fees
• patent application

A small business concern, for the purpose of paying reduced patent fees, is defined as follows:

A small business concern as used in this paragraph means any business concern that:

• Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
• Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.

The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.

To learn more:

• small business concern
• patent fees
• small entity status
• SBA size standards

The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.

Key points about the form:

• It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
• It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
• Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.

Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.

To learn more:

• Credit Card Payment Form
• PTO-2038
• USPTO payments
• patent fees
• trademark fees

The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:

37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.

The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.

Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:

• Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
• Pay the exact small entity basic filing fee, basic national fee, or individual designation fee

As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”

To learn more:

• small entity status
• patent fees
• patent application

When notifying the USPTO of a loss of micro entity status, the following requirements must be met:

• The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
• The notification must be signed by a party identified in 37 CFR 1.33(b).
• A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.

As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.

To learn more:

• micro entity status
• notification
• USPTO
• patent fees
• patent application

A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:

• Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
• Make a minimum deposit of $1,000 for general use
• Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies

As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).

To learn more:

• USPTO
• deposit account
• patent fees
• patent services

According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:

• Each type of fee erroneously paid as a micro entity
• The current fee amount for a small or non-small entity
• The micro entity fee actually paid and the date of payment
• The deficiency owed amount for each fee
• The total deficiency payment owed

The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.

To learn more:

• Micro Entity
• Fee Itemization
• Patent Fees
• USPTO Procedures

When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):

A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].

To change to regular (unreduced) fee status, you must either:

• File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
• File a separate notification of loss of entitlement to small entity status.

To learn more:

• micro entity status
• small entity status
• USPTO
• patent fees
• entity status change

What happens if there are insufficient funds in my USPTO deposit account?

If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:

• The USPTO will treat the fee as unpaid
• Any associated filing may be considered incomplete
• You may receive a notice of insufficient funds

The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)

To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.

To learn more:

• USPTO deposit account
• insufficient funds
• overdrawn account
• patent fees

What happens if I overpay a patent fee to the USPTO?

If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’

To request a refund:

1. File a petition for refund within 2 years of the payment date
2. Clearly explain the reason for the overpayment
3. Provide evidence of the overpayment

It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.

To learn more:

• overpayment
• refund
• patent fees
• USPTO
• petition for refund

What happens if I overpaid fees due to incorrect micro entity status?

If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:

“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”

To request a refund:

• File a compliant micro entity certification
• Submit a timely refund request
• Ensure you meet the time constraints specified in 37 CFR 1.29(k)

It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.

To learn more:

• micro entity status
• fee overpayment
• refund request
• patent fees

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

If you erroneously pay small entity fees in good faith, you can correct the error by:

• Submitting a separate deficiency payment for each application or patent
• Itemizing the deficiency payment with specific details
• Paying the full deficiency amount owed

As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”

To learn more:

• small entity status
• patent fees
• error correction

If you don’t pay the issue fee for your patent application, it will be considered abandoned. According to MPEP 203.05, one of the ways an application can become abandoned is:

“for failure to pay the issue fee”

The MPEP refers to sections 711 to 711.05 for more details on this topic. It’s crucial to pay the issue fee on time to prevent your application from being abandoned after all the effort put into the patent prosecution process.

To learn more:

• issue fee
• patent fees
• application abandonment

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.

MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”

The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):

1. Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
2. Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).

Applicants should use this form to properly certify their micro entity status based on an institution of higher education.

To learn more:

• micro entity status
• certification form
• institution of higher education
• patent fees

A USPTO deposit account can be used to pay various fees related to patent applications and services. According to the MPEP:

Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees.

Specifically, fees that can be charged include:

• Filing fees (37 CFR 1.16)
• Processing fees (37 CFR 1.17)
• Issue fees (37 CFR 1.18, subject to certain conditions)
• Appeal fees
• International application fees
• Petition fees

However, fees under 37 CFR 1.19 (document supply fees), 1.20 (post-issuance fees), and 1.21 (miscellaneous fees) generally cannot be charged through a general authorization, with some exceptions.

To learn more:

• USPTO
• deposit account
• patent fees
• fee payment

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):

• Qualify as a small entity
• Not have been named as an inventor on more than four previously filed patent applications
• Not have a gross income exceeding three times the median household income in the preceding calendar year
• Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit

The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“

To learn more:

• micro entity
• gross income
• patent fees
• small entity
• patent applications

To establish micro entity status based on an institution of higher education, an applicant must meet two main requirements:

1. Qualify as a small entity as defined in 37 CFR 1.27
2. Meet one of the following criteria:
   • The applicant’s employer, from which they obtain the majority of their income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, or
   • The applicant has assigned, granted, conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest in the application to such an institution of higher education.

As stated in MPEP 509.04(b): “An applicant for micro entity status under the ‘institution of higher education’ basis set forth in 37 CFR 1.29(d) must satisfy two requirements.”

To learn more:

• micro entity
• institution of higher education
• patent fees
• small entity

For nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 8, 2004, the following fees are required:

• Basic filing fee (37 CFR 1.16(a), (b), (c) or (e))
• Search fee (37 CFR 1.16(k), (l), (m), or (n))
• Examination fee (37 CFR 1.16(o), (p), (q), or (r))
• Application size fee, if applicable (37 CFR 1.16(s))
• Excess claims fees, if applicable (37 CFR 1.16(h), (i), or (j))
• Non-electronic filing fee, if applicable (37 CFR 1.16(t))

The MPEP states: The basic filing, search and examination fees are due on filing of the nonprovisional application under 35 U.S.C. 111(a). However, these fees may be paid later with a surcharge if paid within the time period set in 37 CFR 1.53(f).

To learn more:

• patent fees
• nonprovisional application
• filing fees
• USPTO fees

What are the income limitations for qualifying as a micro entity?

To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:

“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))

For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.

To learn more:

• micro entity
• income limitations
• patent fees
• USPTO

What are the consequences of submitting insufficient fees for a patent application?

Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:

“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”

This means:

• Your application won’t receive a filing date until the correct fees are paid
• This delay could affect your priority date
• If not corrected promptly, the application may be considered abandoned

It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.

To learn more:

• patent fees
• insufficient fees
• filing date
• incomplete application

What are the accepted payment methods for patent fees?

The USPTO accepts various payment methods for patent fees:

• Credit or debit card
• Electronic funds transfer (EFT)
• Deposit account
• Check or money order

As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.

To learn more:

• patent fees
• payment methods
• USPTO
• credit card
• electronic funds transfer
• deposit account

Excess claims fees are additional fees charged for patent applications that contain more than a certain number of claims. According to the MPEP:

• 37 CFR 1.16(h) sets the fee for each independent claim in excess of three.
• 37 CFR 1.16(i) sets the fee for each claim (independent or dependent) in excess of twenty.

The MPEP states: The excess claims fees specified in 37 CFR 1.16(h) and (i) apply to any excess claims fee paid, regardless of the filing date of the application and regardless of the date on which the claim necessitating the excess claims fee payment was added to the application.

These fees also apply to reissue applications, but the claims in the original patent are not counted when determining excess claims fees for a reissue application. For applications filed without claims, excess claims fees are due when the excess claims are presented in the application.

To learn more:

• excess claims fees
• patent fees
• claim count
• USPTO fees

The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:

37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.

However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:

• A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
• In later submissions, ‘filing fee(s)’ would also cover surcharges.
• A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.

The key is to provide enough information for the USPTO to understand the purpose of the payment.

To learn more:

• fee itemization
• USPTO payments
• patent fees
• trademark fees

According to MPEP 509.02, fees for small entities are reduced by 50% for most patent-related fees. The MPEP states:

The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20).

Additionally, certain PCT international stage fees are also eligible for the 50% reduction for small entities.

To learn more:

• patent fees
• fee reduction
• small entity
• USPTO fees

Once small entity status is established in an application or patent, it remains in effect until:

• The issue fee is due, or
• Any maintenance fee is due

At these points, a new determination of entitlement to small entity status is required. As stated in 37 CFR 1.27(g)(1): “Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.”

To learn more:

• small entity status
• patent fees
• patent maintenance

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

Once small entity status is established in an application or patent, you can continue to pay fees as a small entity until the issue fee is due or any maintenance fee is due. This is stated in 37 CFR 1.27(g)(1): ‘Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.’

To learn more:

• small entity status
• patent fees
• maintenance fees
• issue fees

The gross income limit for micro entity status is determined as follows:

• It is set at three times the median household income for the preceding calendar year, as reported by the Bureau of the Census.
• The USPTO publishes the current maximum qualifying gross income on their website.
• This limit applies to each applicant, inventor, and joint inventor individually.

The MPEP clarifies: “At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the ‘maximum qualifying gross income’ posted on the USPTO website.“

It’s important to note that gross income means total income, not adjusted gross income. The MPEP states: “‘Gross income’ and ‘adjusted gross income’ are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is ‘gross income’ – not ‘adjusted gross income’ that matters.“

To learn more:

• micro entity
• gross income limit
• patent fees
• USPTO
• median household income

The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:

The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.

To calculate the total deficiency payment:

1. Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
2. Subtract the micro entity fee amount previously paid
3. Sum up all individual deficiency amounts

This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.

To learn more:

• Micro Entity
• Fee Calculation
• Patent Fees
• USPTO Procedures

The application size fee is calculated based on the number of pages in the application. According to 37 CFR 1.16(s), this fee applies to any application filed under 35 U.S.C. 111 where the specification (including claims) and drawings exceed 100 sheets of paper.

The MPEP states: The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. However, certain parts of the application are excluded from this calculation:

• ASCII plain text files or XML files of Sequence Listings
• Computer readable forms (CRF) of Sequence Listings
• Computer Program Listing Appendices in compliance with 37 CFR 1.96(c)

For applications submitted via the USPTO patent electronic filing system, the paper size equivalent… will be considered to be seventy five percent of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into the Office file wrapper.

To learn more:

• application size fee
• patent fees
• page count
• USPTO fees

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

An ‘institution of higher education’ for micro entity status purposes is defined according to Section 101(a) of the Higher Education Act of 1965. The key criteria include:

• Located in any U.S. state or territory
• Admits students with secondary education or equivalent
• Authorized to provide post-secondary education
• Offers bachelor’s degrees or at least 2-year programs toward such degrees
• Is a public or non-profit institution
• Is accredited or pre-accredited by a recognized agency

As stated in MPEP 509.04(b): “Section 101(a) of the Higher Education Act of 1965 defines what is meant by ‘institution of higher education’ in the context of 37 CFR 1.29(d).”

To learn more:

• institution of higher education
• micro entity
• Higher Education Act
• patent fees

The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:

35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

Key points about USPTO refunds for credit card payments:

• Refunds are processed as credits to the original credit card account used for payment.
• The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
• For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.

It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.

To learn more:

• USPTO refunds
• credit card payments
• fee refunds
• patent fees
• trademark fees

The USPTO has different fee structures for recording patent and trademark documents. According to MPEP 302.06:

• For patents: The fee is set in 37 CFR 1.21(h)
• For trademarks: The fee is set in 37 CFR 2.6(b)(6)

Additionally, for patent documents:

• Electronic submissions currently have a $0 fee
• Paper or fax submissions have a fee set in 37 CFR 1.21(h)(2)

It’s important to note that trademark fees may differ and do not have the same $0 electronic submission option as patents. Always check the current USPTO fee schedule for the most up-to-date information.

To learn more:

• USPTO fees
• patent fees
• trademark fees
• fee comparison

When an applicant submits an insufficient payment for fees due on filing a nonprovisional application under 35 U.S.C. 111(a) and has not specified how to apply the payment, the USPTO applies the payment in a specific order. The MPEP outlines this order as follows:

1. Basic filing fee
2. Search fee
3. Examination fee
4. Excess claims fee (independent claims exceeding three and total claims exceeding twenty)
5. Application size fee
6. Non-electronic filing fee (if applicable)

For provisional applications under 35 U.S.C. 111(b), the order is:

1. Basic filing fee
2. Application size fee

This information helps applicants understand how their payments will be allocated if they submit an insufficient amount for the required fees.

To learn more:

• insufficient payment
• patent fees
• fee application
• USPTO procedure

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter:

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

This means that applicants must take specific steps to maintain small entity status in a continuation application:

1. Review Eligibility: Ensure that the applicant still qualifies for small entity status under the current rules.
2. New Assertion: File a new assertion of entitlement to small entity status in the continuation application.
3. Timing: This assertion should be made at the time of filing the continuation application or with the first fee payment.

It’s important to note that improperly claiming small entity status can have serious consequences, including the patent being held unenforceable. Therefore, applicants should carefully review their status before making a new assertion in a continuation application.

For micro entity status, the requirements are even more stringent:

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

Applicants should be diligent in properly asserting and maintaining their entity status throughout the patent application process, including when filing continuation applications.

For more information on continuation application, visit: continuation application.

For more information on patent fees, visit: patent fees.

Paying a small entity fee has significant implications for certifying small entity status. According to MPEP 509.03(a), “Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b).” This means that simply paying the small entity fee, even without a specific written assertion, activates the self-certification requirement. Applicants should be aware that this payment invokes the certification provisions, regardless of whether they are a practitioner or non-practitioner.

To learn more:

• small entity status
• patent fees
• self-certification
• patent application

Licensing can significantly impact small entity status for patent fees. The MPEP provides specific guidance on this matter:

Rights conveyed by an applicant or patentee to a Government agency are not considered to be license for purposes of this paragraph. A Government agency includes any agency of the Federal Government or military department of the Government.

This means that licensing to a government agency does not affect small entity status. However, licensing to other entities can impact your status:

• If you license rights to a large entity, you may lose your small entity status.
• Exclusive licenses to large entities typically disqualify you from small entity status.
• Non-exclusive licenses may not affect your status, depending on the terms.

It’s crucial to review any licensing agreements carefully and consult with a patent attorney to determine how they might affect your small entity status.

To learn more:

• licensing
• small entity status
• patent fees
• government agency

How does employment at an institution of higher education affect micro entity status?

Employment at an institution of higher education can provide a pathway to micro entity status. The MPEP states:

“A micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.” (MPEP 509.04(d))

This means that if you are employed by a qualifying institution of higher education and receive the majority of your income from it, or if you have assigned or are obligated to assign your rights in the application to such an institution, you may be eligible for micro entity status. This provision can be particularly beneficial for academic researchers and inventors.

To learn more:

• micro entity
• higher education
• patent fees
• USPTO

How does claiming small entity status affect patent fees?

Claiming small entity status can significantly reduce patent fees. According to MPEP 509.03, “Claiming small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).” This means that small entities, such as independent inventors, small businesses, and nonprofit organizations, can pay reduced fees for many patent-related services, typically 50% of the standard fee. However, it’s important to ensure eligibility before claiming this status to avoid potential issues later in the patent process.

To learn more:

• small entity status
• patent fees
• fee reduction
• USPTO

A general authorization allows the USPTO to charge certain fees to your deposit account without requiring specific authorization for each fee. The MPEP states:

A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.

Key points about general authorizations:

• They can cover fees under 37 CFR 1.16 and 1.17
• Fees under 37 CFR 1.19, 1.20, and 1.21 are generally not covered
• Issue fees (37 CFR 1.18) require a separate authorization after the notice of allowance
• The authorization should be clear and unambiguous to avoid misinterpretation

Always ensure your deposit account has sufficient funds to cover authorized fees to avoid potential application abandonment or additional expenses.

To learn more:

• USPTO
• deposit account
• fee authorization
• patent fees

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

How do I correct an error in micro entity status if I underpaid fees?

If you erroneously paid fees as a micro entity when you were not entitled to that status, resulting in an underpayment, you need to take the following steps:

• Submit a written assertion of small entity status (if eligible) or a written assertion to establish non-small entity status.
• Pay the fee deficiency, which is the difference between the amount paid and the amount due.

As stated in MPEP 509.04(f): “A written assertion to establish non-small entity status must be accompanied by the difference between the current amount due and the amount previously paid.”

It’s important to correct the error promptly to avoid potential issues with your patent application or granted patent.

To learn more:

• micro entity status
• fee correction
• underpayment
• patent fees

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

How can I request a refund for my USPTO deposit account?

To request a refund for your USPTO deposit account, you need to follow these steps:

• Submit a written request to the USPTO Office of Finance
• Include your deposit account number and the amount to be refunded
• Provide a detailed explanation for the refund request

The MPEP states: “A refund to a deposit account may be made on request to the Office of Finance.” (MPEP 509.01)

It’s important to note that refunds are typically processed for overpayments or erroneous charges. The USPTO will review your request and determine if a refund is warranted based on the circumstances provided in your explanation.

To learn more:

• USPTO deposit account
• refund request
• Office of Finance
• patent fees

To regain micro entity status after losing it, you must file a new certification of entitlement to micro entity status. As stated in MPEP 509.04(e):

Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.

This means you must:

• Ensure you meet the criteria for micro entity status as defined in 37 CFR 1.29(a) or 1.29(d)
• File a new certification form (PTO/SB/15A or PTO/SB/15B) in the application or patent
• Meet all other requirements for micro entity status

To learn more:

• micro entity status
• USPTO
• patent fees
• certification
• entity status change

How can I pay patent fees to the USPTO?

The USPTO offers several methods for paying patent fees. According to MPEP 509:

“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”

Here’s a breakdown of these payment methods:

• Credit Card: Accepted online or by mail/fax using Form PTO-2038
• Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
• Check or Money Order: Made payable to the Director of the USPTO
• Deposit Account: A pre-established account with the USPTO
• Cash: Only for in-person payments at the USPTO office

For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.

To learn more:

• patent fees
• USPTO payment methods
• credit card
• electronic funds transfer
• deposit account

To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:

• Submitting a separate deficiency payment for each application or patent
• Providing an itemization of the total deficiency payment
• Paying the deficiency owed

The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity. This means the process is similar to correcting small entity status errors.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

How can I correct an error in micro entity status if I’m no longer eligible?

If you discover that you’re no longer eligible for micro entity status, you should promptly notify the USPTO and pay the deficiency in fees. The MPEP states:

“A notification of loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.” (MPEP 509.04(f))

To correct the error:

• File a notification of loss of entitlement to micro entity status
• Pay the deficiency between the micro entity fees paid and the fees that should have been paid
• Include any required surcharge for the late payment of the fee deficiency

It’s crucial to address this promptly to avoid potential issues with your patent application or granted patent.

To learn more:

• micro entity status
• fee deficiency
• patent fees
• USPTO notification

According to MPEP 303, applicants who want information about assignment documents must take specific steps:

1. Request separately certified copies of assignment documents
2. Submit the fees required by 37 CFR 1.19

The MPEP states:

“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)

Fees for multiple dependent claims are calculated differently from regular dependent claims. According to MPEP 608.01(n):

• A multiple dependent claim is considered to be that number of dependent claims to which it refers.
• Any claim depending from a multiple dependent claim is also considered as the number of dependent claims as referred to in the multiple dependent claim from which it depends.
• If at least one multiple dependent claim is proper, the multiple dependent claim fee set forth in 37 CFR 1.16(j) will be required.

The USPTO uses Form PTO/SB/07 to assist in the computation of fees for multiple dependent claims. This form is placed in the application file by the Office of Patent Application Processing (OPAP) or the Technology Center (TC) technical support staff.

To learn more:

• patent fees
• multiple dependent claims
• patent application
• USPTO forms

Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’

To correct the error, you must:

• Submit a separate deficiency payment for each application or patent
• Provide an itemized list of the fees paid in error
• Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)

To learn more:

• small entity status
• error correction
• patent fees
• USPTO procedures

Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):

Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.

This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

No, paying a fee in a non-micro entity amount does not automatically change your entity status. According to MPEP 509.04(e):

Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.

To properly notify the USPTO of a change in entity status, you must file a separate notification in the application or patent. This notification must be filed prior to or at the time of paying any fee after the date on which micro entity status is no longer appropriate.

To learn more:

• micro entity status
• USPTO fees
• entity status change
• patent fees

Can small entity status be changed during the life of a patent?

Yes, small entity status can change during the life of a patent. The MPEP 509.03 provides guidance on this:

Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

Key points to remember:

• Status can change due to mergers, acquisitions, or licensing agreements.
• The USPTO must be notified of any change before paying the issue fee or maintenance fees.
• If status changes from small to large entity, future fees must be paid at the higher rate.
• Conversely, if an entity becomes eligible for small entity status, they can claim it for future fee payments.

It’s important to regularly review your entity status and update the USPTO as necessary to ensure compliance and proper fee payment.

To learn more:

• small entity status
• patent fees
• USPTO
• status change

Can I retroactively claim micro entity status for previously paid fees?

No, you cannot retroactively claim micro entity status for fees that have already been paid. The MPEP clearly states:

“A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.” (MPEP 509.04(f))

This means:

• Micro entity status must be established before or at the time of paying fees at the micro entity rate
• You cannot request a refund for the difference between standard fees and micro entity fees for payments made before establishing micro entity status
• Future fees can be paid at the micro entity rate once status is properly established

To benefit from micro entity status, ensure you file the certification before paying any fees you wish to pay at the reduced rate.

To learn more:

• micro entity status
• patent fees
• USPTO fee policy
• retroactive claims

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

Can I correct micro entity status errors retroactively?

Yes, you can correct micro entity status errors retroactively, but there are specific rules and time limitations to consider. According to MPEP 509.04(f):

“Errors in micro entity status may be rectified by filing a notification of a change in status … and paying the required fee deficiency.”

However, the ability to make retroactive corrections is subject to time constraints:

• For underpayments: You can correct the error at any time by paying the fee deficiency.
• For overpayments: You must file a micro entity certification and request a refund within the time period set in 37 CFR 1.29(k), which is generally within three months of the fee payment.

It’s crucial to address any status errors promptly to maintain the validity of your patent application or granted patent and to ensure compliance with USPTO regulations.

To learn more:

• micro entity status
• retroactive correction
• patent fees
• USPTO regulations

No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:

Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).

This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.

According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.

To learn more:

• foreign universities
• micro entity status
• institution of higher education
• patent fees

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

No, for-profit universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. One of the requirements for an institution of higher education under the Higher Education Act of 1965 is that it must be non-profit.

MPEP 509.04(b) states: “One of the requirements for an ‘institution of higher education’ under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

This means that employees or those who have assigned rights to for-profit universities cannot claim micro entity status on this basis.

To learn more:

• for-profit universities
• micro entity status
• institution of higher education
• patent fees

Yes, failure to pay the issue fee can result in an abandoned patent application. MPEP 203.05 explicitly states that an abandoned application includes one removed from the Office docket for failure to pay the issue fee (MPEP § 711 to § 711.05). This means that even if an application has been approved for issuance, if the applicant fails to pay the required issue fee within the specified time frame, the application will be considered abandoned.

For more detailed information on this topic, you can refer to MPEP § 711 to § 711.05.

Can a small business qualify for micro entity status?

Yes, a small business can potentially qualify for micro entity status, but there are specific requirements to meet. The MPEP outlines two main paths for small businesses:

1. Income-based qualification: If the small business’s income does not exceed three times the median household income in the preceding calendar year, it may qualify.
2. Institution of higher education qualification: If the small business has assigned, granted, conveyed, or is under obligation to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.

The MPEP states:

“An applicant that qualifies as a micro entity under either the gross income basis or the institution of higher education basis can file a certification of micro entity status on either basis (but not both).”

It’s important to note that all parties involved (applicants, inventors, and joint inventors) must meet the requirements. For more details, refer to MPEP 509.04.

To learn more:

• micro entity
• small business
• patent applications
• USPTO

To learn more:

• patent fees

Yes, nonprofit organizations can qualify for small entity status under certain conditions. According to 37 CFR 1.27(a)(3), a nonprofit organization that qualifies for small entity status is one that:

• Has not assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity
• Is either:
  • A university or other institution of higher education
  • An organization described in section 501(c)(3) of the Internal Revenue Code and exempt from taxation under 501(a)
  • A nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state
  • A foreign organization that would qualify under the above if it were located in the U.S.

It’s important to note that government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations for small entity status purposes.

To learn more:

• nonprofit organization
• small entity status
• patent fees
• USPTO

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.

To learn more:

• small entity status
• patent fees
• patent application
• filing fees

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

To determine small entity status for a business, several steps should be taken:

• Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
• Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
• Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
• If rights have been transferred, conduct the same review for each other entity involved.

The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”

To learn more:

• small entity status
• small business
• patent fees
• business size standards

If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’

This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:

• Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
• Pay the fee amount for a non-small entity

To learn more:

• small entity status
• change in status
• patent fees
• USPTO notification

To learn more:

• status change

A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:

• A person
• A small business concern
• A nonprofit organization

Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.

To learn more:

• small entity
• patent fees
• fee reduction
• patent application

To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.

MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”

This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.

To learn more:

• small entity
• micro entity status
• institution of higher education
• patent fees

The non-electronic filing fee is an additional fee charged for patent applications not filed by electronic means. This fee was established by the Leahy-Smith America Invents Act and is codified in 37 CFR 1.16(t).

The MPEP states: Section 10(h) of Public Law 112-29, September 16, 2011 (the Leahy-Smith America Invents Act) provides that an additional fee of $400 ($200 for a small entity) shall be established for each application for an original (i.e., non-reissue) patent, except for a design, plant, or provisional application, not filed by electronic means.

This fee applies to:

• Applications under 35 U.S.C. 111(a) filed on or after November 15, 2011, other than by the USPTO patent electronic filing system.
• International applications filed with the USPTO as receiving Office on or after November 15, 2011, as part of the transmittal fee.

To learn more:

• non-electronic filing fee
• patent fees
• electronic filing
• USPTO fees

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The fee for recording documents with the USPTO varies depending on the method of submission and the type of intellectual property involved. According to MPEP 302.06:

For patents:

• If submitted electronically: $0 (as of 2019)
• If submitted on paper or via facsimile: Fee set in 37 CFR 1.21(h)(2)

For trademarks:

• Fee set in 37 CFR 2.6(b)(6)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

To learn more:

• USPTO fees
• document recording
• patent fees
• trademark fees
• electronic submission

The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.

To learn more:

• small entity status
• patent fees
• patent application

A small business concern, for the purpose of paying reduced patent fees, is defined as follows:

A small business concern as used in this paragraph means any business concern that:

• Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
• Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.

The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.

To learn more:

• small business concern
• patent fees
• small entity status
• SBA size standards

The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.

Key points about the form:

• It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
• It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
• Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.

Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.

To learn more:

• Credit Card Payment Form
• PTO-2038
• USPTO payments
• patent fees
• trademark fees

The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:

37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.

The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.

Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:

• Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
• Pay the exact small entity basic filing fee, basic national fee, or individual designation fee

As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”

To learn more:

• small entity status
• patent fees
• patent application

When notifying the USPTO of a loss of micro entity status, the following requirements must be met:

• The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
• The notification must be signed by a party identified in 37 CFR 1.33(b).
• A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.

As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.

To learn more:

• micro entity status
• notification
• USPTO
• patent fees
• patent application

A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:

• Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
• Make a minimum deposit of $1,000 for general use
• Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies

As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).

To learn more:

• USPTO
• deposit account
• patent fees
• patent services

According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:

• Each type of fee erroneously paid as a micro entity
• The current fee amount for a small or non-small entity
• The micro entity fee actually paid and the date of payment
• The deficiency owed amount for each fee
• The total deficiency payment owed

The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.

To learn more:

• Micro Entity
• Fee Itemization
• Patent Fees
• USPTO Procedures

When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):

A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].

To change to regular (unreduced) fee status, you must either:

• File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
• File a separate notification of loss of entitlement to small entity status.

To learn more:

• micro entity status
• small entity status
• USPTO
• patent fees
• entity status change

What happens if there are insufficient funds in my USPTO deposit account?

If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:

• The USPTO will treat the fee as unpaid
• Any associated filing may be considered incomplete
• You may receive a notice of insufficient funds

The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)

To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.

To learn more:

• USPTO deposit account
• insufficient funds
• overdrawn account
• patent fees

What happens if I overpay a patent fee to the USPTO?

If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’

To request a refund:

1. File a petition for refund within 2 years of the payment date
2. Clearly explain the reason for the overpayment
3. Provide evidence of the overpayment

It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.

To learn more:

• overpayment
• refund
• patent fees
• USPTO
• petition for refund

What happens if I overpaid fees due to incorrect micro entity status?

If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:

“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”

To request a refund:

• File a compliant micro entity certification
• Submit a timely refund request
• Ensure you meet the time constraints specified in 37 CFR 1.29(k)

It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.

To learn more:

• micro entity status
• fee overpayment
• refund request
• patent fees

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

If you erroneously pay small entity fees in good faith, you can correct the error by:

• Submitting a separate deficiency payment for each application or patent
• Itemizing the deficiency payment with specific details
• Paying the full deficiency amount owed

As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”

To learn more:

• small entity status
• patent fees
• error correction

If you don’t pay the issue fee for your patent application, it will be considered abandoned. According to MPEP 203.05, one of the ways an application can become abandoned is:

“for failure to pay the issue fee”

The MPEP refers to sections 711 to 711.05 for more details on this topic. It’s crucial to pay the issue fee on time to prevent your application from being abandoned after all the effort put into the patent prosecution process.

To learn more:

• issue fee
• patent fees
• application abandonment

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).

The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.

The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.

MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”

The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):

1. Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
2. Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).

Applicants should use this form to properly certify their micro entity status based on an institution of higher education.

To learn more:

• micro entity status
• certification form
• institution of higher education
• patent fees