Better Know a Patent Form: Forgetting to File a Micro-Entity Certification

06 Jun Better Know a Patent Form: Forgetting to File a Micro-Entity Certification

Given that we’re a law office, it’s not a surprise that we often advise patent holders to secure legal assistance to help navigate the complex patent process. But our advice isn’t merely self-serving. Not only is the patent process complicated, but there are many opportunities and options that patent applicants often fail to take advantage of, simply because they aren’t aware that the options exists to begin with.

An extremely common oversight is a cost reduction opportunity that can reduce patent fees by as much as 75%.

If you look at the USPTO Fee Schedule, you’ll see that the cost breakdown is divided into three categories: Fee, Small Entity Fee, and Micro Entity Fee.

The highest cost fees are often referred to as “undiscounted fees,” which apply to all applicants in absence of any indication to the contrary. However, small businesses with fewer than 500 employees, non-profits, and individual inventors can be considered “small entities.” Small entities are entitled to pay the Small Entity Fee for any patent filings, a 50% discount off the full cost.

Patent regulations require a small entity to make an assertion of entity size in writing, but this is actually really easy. All a small entity has to do to take advantage of this discount is to check a box stating “small entity status claimed” on the application data sheet.

Furthermore, you can qualify for “micro entity” status if:

  1. You meet the requirements of a small entity;
  2. You make less than current “Maximum Qualifying Gross Income” amount, which as of 2017 is $169,548; AND
  3. Neither the applicant nor any inventor or joint inventor has ever been named on more than 4 previously filed patent applications (this excludes provisional, international, and certain other applications).

Micro entity status allows you to pay the Micro Entity Fee rate, which is a 75% discount off the full undiscounted fee rate. In this case, all you have to do to claim the micro entity discount is to fill out and submit a one-page form with a total of four fields titled “Certification of Micro Entity Status.” That’s it.

Micro entity status affords a 75% discount on ALL patent fees.

Until you’ve filed your fifth non-provisional patent application, you can take full advantage of these discounted rates. Want to file for patents in a large number of countries? You can file an unlimited number of PCT applications. I strongly encourage clients to do as much filing as they can while they have micro entity status.

It’s extremely easy to claim small/micro entity status and leverage those cost savings. And yet, I have personally seen countless inventors spend thousands of dollars more than they had to. These discounts apply to every service for which the USPTO charges.

Let’s say that you want to file a patent application in financial technology.  Fintech is exciting, but there are not many examiners at the USPTO that handle this, so the wait to get a response can be years.  You likely want to pay the extra fee for accelerated examination.  The undiscounted fee is $4000, but the micro entity fee is $1,000, which is much more affordable.

Hopefully this example illustrates the fact that too many inventors overlook opportunities to discount, streamline, and expedite the patent process because they think it will be cheaper in the long run to handle a patent application on their own.

Sadly, the patent process isn’t designed for amateurs and do-it-yourselfers. Unless you really know what you’re doing—and if you haven’t previously filed a few patents with the guidance of an experienced patent attorney, you don’t—then you owe it to yourself to get legal assistance. If you’re tackling the patent application process for the first time, please us to schedule a consultation by calling us at 916-760-8265 or sending us an email using our contact form. We can show you how it makes financial sense to work with a lawyer while seeking a patent for your invention.