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Fees

Prioritized Examination

Question FEE1000:  How much is the fee for prioritized examination and when will it be effective?

The new fee for prioritized examination will be effective at 12:00 a.m. on Monday, September 26, 2011.  The fee rates for large and small entities are listed below.  Like all fees, the USPTO is not authorized to apply a micro entity discount to the prioritized exam fee without setting the fee using the section 10 fee setting process.

CFR Section Fee Code Description 9/26/2011 Fee
(i.e., post-AIA enactment)
1.17(c) 1817 Request for Prioritized Examination $4,800.00
1.17(c) 2817 Request for Prioritized Examination $2,400.00

Question FEE1010:  Are there any other fees required upon filing a Request for Prioritized Examination (Track I)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts.  The fees required to be paid upon filing for prioritized examination are:

i.    Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).

ii.   Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).

iii.  Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).

iv.  Publication fee, as set forth in 37 CFR 1.18(d).

v.  Track I processing fee, as set forth in 37 CFR 1.17(i).

vi.  Track I prioritized examination fee of $4800.00 ($2400.00 for small entities).

vii.  If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).

viii. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).

ix.  If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i).

If any fee is unpaid at the time of filing of the application, the request for Prioritized Examination will be dismissed.  However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees. 

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15% Surcharge

Question FEE2000:  On what date will I have to begin paying the 15% increase on patent fees?

The 15% increase in fee rates will become effective at 12:00 a.m. on Monday, September 26, 2011.

Question FEE2010:  I would like to ensure that I am paying the proper amount.  How do I determine the new fee rates after applying the 15% increase?

The specific fees that will be increased by 15% are listed in the table here.  The entire updated fee schedule can be found at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp.

Question FEE2020:  Are there any patent fees that will not be increasing by 15%?

Yes.  Fees such as international stage PCT fees, certain petition fees, enrollment fees, and service fees will not be increasing by 15%.

Question FEE2030:  What will happen if I forget to pay the increased fee amount on or after September 26, 2011?

The applicable fee amount is the amount in effect on the day the fee is paid.  If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees.  Applicants are encouraged to provide authorization in the application file to charge fees to a specified Deposit Account to avoid insufficient payment of fees.

Question FEE2040:  On June 27, 2011, the USPTO issued a notice of proposed rulemaking to adjust certain patent fee amounts for fiscal year 2012 to reflect fluctuations in the Consumer Price Index (CPI).  Does the office plan to implement this increase in addition to the 15% patent fee increase in the AIA?

No.  Given the timing of the enactment of the AIA so close to the beginning of fiscal year 2012, the USPTO does not plan on implementing the CPI for fiscal year 2012.

Question FEE2050:  Did the 15% increase to certain patent fees impact the FY 2011 fee collections?

Yes, the USPTO collected and was able to spend almost $5 million more in patent fees during FY 2011 related to the 15% fee increase and the prioritized examination   fee.  However, the timing of enactment of the AIA led to an unfortunate rush on fee payments during the 10 days from AIA enactment (September 16, 2011) to the fee increase effective date (September 26, 2011).  Prior to enactment of the AIA, the USPTO estimated that it would collect approximately $70 to $80 million more than the $2.090 billion it was authorized to spend.  The rush on fee payments triggered an additional $139 million in FY 2011 fee collections above the $2.090 billion authorized level.  The total $209 million in fees above the USPTO’s FY 2011 appropriation are not available for the USPTO to spend on operations.  The USPTO estimates that about half of these unavailable fees are collections that otherwise would have been received in FY 2012.

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Electronic Filing Incentive

Question FEE3000:  When will the USPTO begin collecting the additional $400 (and $200 for small entity) for an original patent application (except for a design, plant, or provisional application) that is not filed electronically?

This new fee will be effective at 12:00 a.m. on Tuesday, November 15, 2011.  This fee applies to a patent application filed by mail, rather than via the Office’s electronic filing system (EFS-Web).  This includes PCT international applications filed with the USPTO as the Receiving Office.  All applications filed by mail or hand delivery on or after November 15, 2011, must include the additional $400 ($200 for small entity) fee.  Requests for Continued Examination (RCE) are not subject to the additional $400 ($200 for small entity) fee.

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Micro Entity

Effective Date

Question FEE4100:  If I meet the definition of a micro entity set forth in the AIA, will I be able to pay a micro entity fee beginning on the date of enactment – September 16, 2011?

No.  The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjusted using the fee setting authority provided in section 10 of the Act.

Question FEE4110:  When does the micro entity discount become available?

The micro entity discount becomes available on March 19, 2013.  The micro entity discount gives a 75% reduction in fees associated with filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. 

Eligibility for Micro Entity Status

Question FEE4200:  What are the eligibility requirements for micro entity status?

To qualify as a micro entity, an applicant must meet either of two sets of conditions.  As a first option, an applicant can establish a limited income and limited experience with the patent application filings.  See 37 C.F.R. 1.29(a).  As a second option, an applicant can establish employment by, or an assignment or obligation to assign to, an institution of higher education.  Under either option, an application also must satisfy the requirements for small entity status.   See 37 C.F.R. 1.29(d).

Question FEE4205:  If an applicant does not qualify as a "micro entity," would the applicant automatically be considered a "large entity?"

No, an applicant that does not qualify for micro entity status may qualify for small entity status.  A small entity is entitled to a 50 percent reduction in patent service fees.  An applicant may qualify as a small entity if the applicant is an individual person meeting the conditions set forth in 37 CFR 1.27(a)(1), a small business concern meeting the conditions set forth in 37 CFR 1.27(a)(2), or a not-for-profit organization meeting the conditions set forth in 37 CFR 1.27(a)(3).

Question FEE4215:  If an inventor-applicant licenses a pending patent application to a large entity corporation, can the inventor-applicant qualify as a micro entity?  

No, if an applicant assigns, grants, conveys, or licenses any rights in an application to a party that does not qualify as a small entity under 37 CFR 1.27, then the applicant cannot qualify for any patent fee discount as either a micro entity or a small entity.  In order to qualify for micro entity status, no party can hold rights or obligated rights in an application that does not qualify at least as a small entity. 

Question FEE4220:  Is micro entity status available for both AIA and pre-AIA applications?  

Yes, micro entity status is available for both AIA and pre-AIA applications.  A micro entity certification may be filed in a pending AIA or pre-AIA application at any time during prosecution and in a patent issued under the AIA or pre-AIA law prior to, or concurrent with, a maintenance fee payment. 

Micro Entity Status under the Gross Income Basis

Question FEE4300: What are the requirements to establish micro entity status under the “gross income” basis set forth in 37 C.F.R. 1.29(a)?

An applicant for micro entity status under the “gross income” basis set forth in 37 C.F.R. 1.29(a) must satisfy four requirements.  First, the applicant must certify that he/she/it qualifies as a small entity under 37 CFR 1.27.  Second, the applicant must certify that neither the applicant nor the inventor nor a joint inventor has been named as an inventor on more than four previously filed patent applications.  Third, the applicant must certify that neither the applicant nor the inventor nor a joint inventor had a gross income exceeding three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census.  Lastly, the applicant must certify that neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) in the subject application to an entity that had a gross income in the preceding calendar year in excess of the gross income limit.

Question FEE4305: Where can I find the gross income limit for purposes of determining entitlement to micro entity status under the “gross income” basis?

The USPTO will post the gross income limit on the USPTO website.  The gross income limit will be referred to as the “maximum qualifying gross income.”  Effective September 17, 2013, the maximum qualifying gross income is $153,051. 

Question FEE4310: How can an applicant determine whether he/she/it meets the gross income limit for purposes of determining entitlement to micro entity status under the “gross income” basis? 

For purposes of qualifying for micro entity status on the “gross income” basis, an applicant, inventor, or joint inventor cannot have a gross income during the calendar year when a fee is paid exceeding three times the median household income for the preceding calendar year, as reported on the USPTO website.  What constitutes “gross income” for this context is defined by section 61(a) of the Internal Revenue Code of 1986.  See 26 U.S.C. 61(a). 

Notably, the gross income limit may change each calendar year. Therefore, if the prosecution of an application extends across multiple calendar years, an applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity discount.  If the gross income limit is not met, then a notification of loss of entitlement to micro entity status must be filed in the application to remove micro entity status.

Question FEE4315:  What effect does marital status have on ‘‘gross income’’ insofar as whether the inventor’s tax return is filed jointly, rather than separately, for purposes of meeting the gross income requirement under the “gross income” basis?

Regardless whether an applicant, inventor, or joint inventor filed a joint tax return rather than a separate tax return in the preceding calendar year, the “gross income” limit applies to the amount of income the person would have reported as gross income if that person filed a separate tax return, which includes, for example, properly accounting for that person’s portion of interest, dividends, and capital gains from joint bank or brokerage accounts.

Question FEE4320: What types of applications count toward the application filing limit for purposes of establishing micro entity status under the “gross income” basis?

For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes: (i) U.S. nonprovisional applications (e.g., utility, design, continuation, and divisional applications), (ii) U.S. reissue applications, and (iii) U.S. national stage applications under the Patent Cooperation Treaty (PCT).  It does not matter whether the applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached. 

The application filing limit does not include: (i) foreign applications; (ii) international (PCT) applications for which the basic U.S. national stage filing fee was not paid; and (iii) provisional applications.  In addition, the application filing limit does not include applications where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment. 

Question FEE4325:  Are plant patent applications included in the "four previously filed patent applications" limit set forth in the "gross income" definition for micro entity status? 

Yes, plant applications are counted toward the "four previously filed applications" limit.

Question FEE4327:  Do provisional and non-provisional applications both count toward the filing limit for purposes of establishing micro entity status under the “gross income” basis?

No, the application filing limit includes non-provisional applications, but not provisional applications.  Likewise, the application filing limit excludes foreign applications and international (PCT) applications for which the basic U.S. national stage filing fee was not paid.

Question FEE4330:  For the "four previously filed applications" limit set forth in the "gross income" definition of micro entity status, do national stage applications in other countries count or only national stage applications in the U.S.?  

A PCT application is a single application regardless of the number of countries in which it enters the national stage.  A PCT application counts toward the “four previously filed applications” limit only if the basic national fee under 35 U.S.C. 41(a) has been paid.  Thus, U.S. national stage applications count in the "four previously filed applications" limit, but foreign national stage applications do not count.

Question FEE4335:  If an applicant filed numerous non-provisional patent applications in connection with the applicant's previous employment, can the applicant qualify as a micro entity under the "gross income" definition after leaving that employment?

Yes, the applicant potentially may still qualify as a micro entity.  There is no limit on the number of previously-filed patent applications that may be excluded from the "four previously filed application" limit contained in the "gross income" definition for micro entity status on the basis of prior employment. 

Question FEE4340:  If an inventor-applicant initially pays patent service fees as a small entity and then experiences a reduction in income at the time of allowance, can the inventor-applicant then qualify as a micro entity under the “gross income” basis and pay the issue fee in the micro entity amount?  

Yes, it is possible for a small entity applicant who does meet the gross income limits set forth in the "gross income" definition for micro entity status at the time the application was filed to meet the gross income limit at time the issue fee is due because of a reduction of income.  Assuming the applicant meets the other requirements for micro entity status under the "gross income" definition, the applicant could certify entitlement to micro entity status and pay the issue fee in the micro entity amount. 

Question FEE4345:  Will the USPTO publish the gross income amount used in the "gross income" definition for micro entity status?  If so, where and how frequently will it be updated?

Yes, the USPTO will publish, and update annually, the prevailing gross income amount on the USPTO website at http://www.uspto.gov/patents/law/micro_entity.jsp.

Question FEE4350:  If each inventor named on a patent application has an annual income of $149,000 or less, and if the inventors collectively filed the application as the applicant, would the gross income requirement set forth in the "gross income" definition for micro entity status be met?  

Yes, assuming the “maximum qualifying gross income” posted on the USPTO website is still above $149,000 on the date of fee payment, the "gross income" limit would be met since each inventor's income is equal to or less than $149,000.  But if any one inventor's income exceeds the "maximum qualifying gross income" at the time a fee is paid, then the "gross income" requirement would not be met, and the applicant could not pay any fee due in the micro entity amount.

Question FEE4355:  If an application lists two inventors, one of whom has been listed as inventor on more than four previously filed patents applications, and the other has not; does that inventive entity qualify for micro-entity status under the “gross income” basis, assuming all other requirements are met?

No, if an application names more than one applicant or inventor, each applicant and each inventor must meet the requirements for micro entity status under the “gross income” basis to file a micro entity certification in the application.

Question FEE4380:  For purposes of determining micro entity eligibility under the “gross income” basis where multiple inventors are named on an application, should the incomes of all co-inventors be totaled in determining whether the income limit is met? 

No, the income level requirement under the “gross income” basis for micro entity status applies to each applicant’s and inventor’s income separately (i.e., the combined gross income of all of the applicants and inventors need not be below the income limit).

Micro Entity Status under the “Institution of Higher Education” Basis

Question FEE4400:  What are the requirements to establish micro entity status under the “institution of higher education” basis set forth in 37 C.F.R. 1.29(d)?

An applicant for micro entity status under the “institution of higher education” basis set forth in 37 C.F.R. 1.29(d) must satisfy two requirements.  First, the applicant must certify that he/she/it qualifies as a small entity under 37 C.F.R. 1.27.  Second, the applicant must certify that either (i) the applicant’s employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.

Question FEE4405:  What type of university is eligible as an “institution of higher education” for purposes of establishing micro entity status under 37 C.F.R. 1.29(d)?

Section 101(a) of the Higher Education Act of 1965 defines what is meant by “institution of higher education” in the context of 37 C.F.R. 1.29(d).  See 20 U.S.C. 1001.  Section 101(a) of the Higher Education Act states that the term “institution of higher education” means:

an educational institution in any State that—

      1. admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091(d)(3) of this title;
      2. is legally authorized within such State to provide a program of education beyond secondary education;
      3. provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary;
      4. is a public or other nonprofit institution; and
      5. is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.’

Additionally, section 103 of the Higher Education Act of 1965 provides that the term “State” means the 50 States of the United States as well as “the Commonwealth of Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Commonwealth of the Northern Mariana Islands, and the Freely Associated States’’ and that the Freely Associated States means the ‘‘Republic of the Marshall Islands, the Federated States of Micronesia, and the Republic of Palau.’’  See 20 U.S.C. 1003.

Based upon these definitions, public or non-profit institutions located in one of the 50 States or U.S. territories offering certain undergraduate educational programs credited toward a bachelor’s degree or educational programs awarding “a degree that is acceptable for admission to a graduate or professional degree program” are eligible as an “institution of higher education” for purposes of establishing micro entity status under 37 CFR 1.29(d).

Question FEE4410: Can an institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory that is legally separate from a university located in the U.S. qualify as an “institution of higher education” for purposes of establishing micro entity status under the “institution of higher education” basis?

No.  An institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory does not qualify as an “institution of higher education” under the definition of “institution of higher education” set forth in the Higher Education Act of 1965 for purposes of establishing micro entity status.

Question FEE4415:  Can a university identified as the applicant in a patent application qualify for micro entity status under the “institution of higher education” basis set forth in 37 C.F.R. 1.29(d)?

No, the requirements for micro entity status under the “institution of higher education” basis ordinarily would not be met by a university that is itself an assignee-applicant.  Under the “institution of higher education” basis, assignee-applicant must certify small entity status as well as that (i) the applicant’s employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.  A university generally will be unable to make either certifications (i) or (ii).  That is, a university is unlikely to be the “employee” of certification (i), and the university may be the assignee, but is not likely to be the assignor of the “ownership rights” of certification (ii).  Accordingly, identifying the university as the applicant, rather than the inventor (e.g., university researcher), normally would preclude eligibility for the micro entity discount under the “institution of higher education” basis.

Question FEE4420:  If a foreign university offers an online education program that is accessible in a State or territory of the United States, could the university qualify as an "institution of higher education" under the "institution of higher education" definition for micro entity status?

No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an “institution of higher education” for purposes of micro entity eligibility.  The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located “in any State.”  See also Question FEE4405.

Question FEE4422:  If a university is physically located in a foreign country but offers online classes that are available in the United States, is the foreign university considered  to be "located in a State" for purposes of micro entity status under the “institution of higher education” basis?

No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an “institution of higher education” for purposes of micro entity eligibility under the “institute of higher education” basis.  The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located “in any State.”

Question FEE4425:  Can a university-applicant qualify as a micro entity under the "institution of higher education" basis for micro entity status? 

No, a university-applicant will not qualify as a micro entity under the "institution of higher education" definition for micro entity status because the applicant must (i) be an employee of the “institution of higher education” and obtain the majority of his or her income from such institution; or (ii) be a transferor of ownership rights to such institution.  A university itself would not meet either (i) or (ii).  See also Question FEE4415.

Question FEE4426:  If a university is listed as an applicant, will the micro-entity discount be available under the “institution of higher education” basis?

Probably no, if a university is listed as an applicant, the university-applicant likely would not qualify as a micro entity under the "institution of higher education" basis for micro entity status because the applicant must (1) be an employee of the “institution of higher education” and obtain the majority of his or her income from such institution; or (2) be a transferor of ownership rights to the "institution of higher education."  A university itself would not likely meet either of these conditions.

Question FEE4427:  If an inventor is a university employee and the university employee-inventor assigns the application to the Board of Trustees of the university, will the micro-entity discount be available under the “institution of higher education” basis?

If the Board of Trustees of the university is listed as the applicant, the Board-applicant would qualify as a micro entity under the "institution of higher education" definition for micro entity status only if the Board-applicant is legally separate from the university and is:  (1) an employee of the “institution of higher education” that obtains the majority of his or her income from such institution; or (2) a transferor of ownership rights to the "institution of higher education.”

Question FEE4430:  Can a researcher working at a university located outside the U.S. (e.g., Japan) take advantage of the micro entity fee reductions under the "institution of higher education" definition for micro entity status?

No, a researcher at a foreign university is not eligible for micro entity status under the "institution of higher education" definition because the micro entity statute, via incorporation of the Higher Education Act of 1965 for the definition of an "institute of higher education," limits eligible universities to those located in a "state" where a "state" is defined to be one of the states or territories of the United States.  See also Questions FEE4405 and FEE4415.

Question FEE4435:  If a researcher is employed by an academic institution located in Puerto Rico or one of the U.S. territories, could the researcher qualify for micro entity status under the "institution of higher education" definition? 

Yes, a researcher at a university located in Puerto Rico or another U.S. territory might be eligible for micro entity status under the "institute of higher education" definition, if all other requirements are satisfied.  An "institute of higher education" is defined by the Higher Education Act of 1965 and that definition is incorporated into the micro entity statute.  The Higher Education Act defines an "institution of higher education" as located a "state" where a "state" is further defined to be one of the states or territories of the United States.  See also Questions FEE4405 and FEE4415.

Question FEE4440:  Under the "institute of higher education" definition for micro entity status, is there a limit on the number of applications for which micro entity reduced fees are paid? 

No, the "institute of higher education" definition, unlike the "gross income" definition, does not contain any limit on the number of applications for which micro entity reduced fees are paid. 

Question FEE4445:  If an application is jointly assigned to an institution of higher education and a corporation, and if both the institution and the corporation are designated as the applicant, does the application qualify for micro-entity status?

No, the application will not qualify for micro entity status because each assignee named as the applicant must meet the § 1.29(d) requirements.  Because the institution of higher education cannot qualify under § 1.29(d) (see answer to Question FEE4415), the applicant cannot qualify.

Question FEE4450:  If all inventors on a patent application qualify for micro entity status, and if those inventors assign the application to their university-employer as a condition of their employment, can the university file as the "applicant" and secure the micro entity discount or should the inventors be named as the applicant in order to obtain the micro entity discount?

The inventors should be named as the applicant for the micro entity discount to be available.  If the university filed as the applicant, the university would not be eligible for the micro entity discount.  Under the "gross income" definition, the university likely would not meet the "four previously filed applications" limit.  Likewise, under the "institution of higher education" definition, the university itself would not either (i) be an employee of the “institution of higher education” or obtain the majority of its income from such institution; or (ii) be a transferor of ownership rights to such institution.  See Question FEE4415.

Paying Fees as a Micro Entity

Question FEE4500: If there is more than one inventor named in a patent application as the applicant, do all of the inventors have to qualify as a micro entity to pay fees in the micro entity amount?

Yes, if there is more than one inventor named in a patent application as the applicant, each inventor must qualify for micro entity status to pay fees in the micro entity amount.  The inventors may qualify for micro entity status individually under either the “gross income” basis or the “institution of higher education” basis.

Question FEE4505:  If an inventor is named in a patent application as the applicant and if the inventor assigns his ownership rights in the application to an assignee, what qualifications do the inventor and/or the assignee have to meet to secure the micro entity discount?

Under the “gross income” basis, the inventor and the assignee must certify that each meets the gross income limit.  Additionally, the inventor must certify that he/she meets the application filing limit.

Under the “institution of higher education” basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education.  Additionally, the assignee must certify that it qualifies as a small entity.

Question FEE4510:  If an inventor assigns his ownership rights in an invention to an assignee and if the assignee files a patent application as the applicant, what qualifications do the inventor and/or the assignee have to meet to secure the micro entity discount?

Under the “gross income” basis, the inventor and the assignee must certify that each meets the gross income limit.  Additionally, the inventor must certify that he/she meets the application filing limit, and if the assignee is a natural person, then the assignee also must certify that he/she meets the application filing limit.

Under the “institution of higher education” basis, a natural person assignee must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education.  A juristic entity assignee is unlikely to qualify for micro entity status under the “institution of higher education” basis.

Question FEE4515:  If there is more than one inventor named in a patent application as the applicant, and if one of the inventors assigns his ownership rights in the application to an assignee, what qualifications do the inventors and/or the assignee have to meet to secure the micro entity discount?

Under the “gross income” basis, the inventor and the assignee must certify that each meets the gross income limit.  Additionally, the inventor must certify that he/she meets the application filing limit.

Under the “institution of higher education” basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education.  Additionally, the assignee must certify that it qualifies as a small entity.

Question FEE4520:  Can an applicant for a pending application filed before March 19, 2013, pay micro entities fees after March 19, 2013?  

Yes, eligibility for the micro entity discount is determined at the time that a fee is due and not as of the filing date of the application.  That is, if an applicant is due to pay a fee after March 19, 2013 and qualifies as a micro entity, then the applicant may pay micro entity reduced fees, regardless if the application was filed before the micro entity discount became effective on March 19, 2013.  To pay micro entity reduced fees, the applicant must file a certification of micro entity status prior to, or at the time, the fees are first paid in the micro entity amount.

Question FEE4522:  When must an applicant determine micro-entity status?

Qualification for micro entity status must be determined at the time any fee is paid at the micro entity discount rate.

Question FEE4525:  How much would a standard utility patent cost a micro entity applicant?

As of March 19, 2013, a standard utility patent will cost a micro entity approximately $1145.  The micro entity filing, search, and examination fees for a utility application are $70, $150, and $180, respectively, for a total of $400.  Additionally, the micro entity issue and publication fees for a utility application are $445 and $300, respectively, for a total of $745.  If a micro entity applicant files a large size application containing an excessive number of claims or extends the time to reply to Office actions, then additional fees will accrue.  Further, beginning on January 1, 2014, the micro entity utility application issue and publication fees will be reduced to $240 and $0, respectively, creating significant additional savings for a micro entity applicant.

Question FEE4530:  If a maintenance fee is due on May 1, 2013 for an application filed before March 19, 2013, and the patentee qualifies as a micro entity, can the patentee pay the maintenance fee in the reduced micro entity amount?

Yes, a patentee who qualifies for micro entity status when a maintenance fee is due may pay the maintenance fee in the micro entity amount, provided of course that the required certification of micro entity status is filed together with, or prior to, the maintenance fee payment.

Micro Entity Certification Forms

Question FEE4600:  Does the USPTO have any micro entity certification forms available?

Yes, the USPTO has two micro entity certification forms available on the USPTO forms webpage at www.uspto.gov/forms.  One form is available for micro entity certification under the “gross income” basis set forth in 37 C.F.R 1.29(a), and the other form is available for micro entity certification under the “institution of higher education” basis set forth in 37 C.F.R. 1.29(d).

Question FEE4605:  Can a micro entity certification be a simple statement that the applicant qualifies for micro entity status under the “gross income” basis set forth in 37 C.F.R. 1.29(a) or the “institution of higher education” basis set forth in 37 C.F.R. 1.29(d) without enumerating of any of the respective requirements for micro entity status?

No, a micro entity certification must certify that all of the requirements for micro entity status as they appear in 37 C.F.R. 1.29(a) or (d), as applicable; a simple statement alleging entitlement to micro entity status is not sufficient.  Applicants are encouraged to use the USPTO micro entity certification forms available on the USPTO forms webpage at www.uspto.gov/forms.

Question FEE4610:  Can a micro entity certification form be filed in an application before March 19, 2013 – the date that micro entity fee amounts become available?

Yes, an applicant may file a micro entity certification form before March 19, 2013.  However, an applicant who is eligible for the micro entity discount cannot pay fees subject to the micro entity discount until March 19, 2013.

Question FEE4615:  Who can sign a certification of micro entity status?

A certification of micro entity status can be signed only by an authorized party as set forth in 37 C.F.R. 1.33(b), which includes:

(1)  a registered patent practitioner, meaning a registered attorney or agent who is either of record or acting in a representative capacity under 37 C.F.R. 1.34;

(2)  an inventor who is named as the sole inventor and identified as the applicant; or

(3)  all of the joint inventors who are identified as the applicant. 

For joint inventor applicants, each joint inventor should sign a separate copy of the relevant micro entity certification form.  However, if one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.  See USPTO form number AIA/81 titled Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address available on the USPTO forms webpage at http://www.uspto.gov/forms.

Additionally, if any applicant is an assignee or other party under 37 C.F.R. 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status.  An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.

Question FEE4620:  Is a micro entity certification form required for each fee payment made in the micro entity amount?

An applicant is not required to provide a certification of micro entity status with each fee payment once micro entity status has been established in an application.  The applicant nevertheless must make a determination whether the requirements for micro entity status exist at the time each fee payment is made.  If any requirement for micro entity status is no longer met, then the applicant must notify the Office of loss of micro entity status and pay the required fee in the small or undiscounted amount, as appropriate.

Question FEE4625:  Can an independent inventor sign a micro entity status certification if he/she prepared the patent application and there is no assignee?

Yes, an independent inventor can sign the micro entity certification provided the inventor is identified as the applicant.

Question FEE4630:  If a registered patent practitioner is representing three joint inventors and intends to sign the micro entity certification on behalf of three joint inventors who qualify for micro entity status, should the practitioner sign only one certification for all inventors or sign three separate certifications, one for each inventor? 

A practitioner who represents three joint inventors who qualify for micro entity status may sign a single micro entity certification on behalf of the three joint inventors.

Question FEE4635:  If an applicant qualifies for micro entity status, should the applicant (i) file a micro entity certification and simultaneously pay the issue fee in the micro entity amount; or (ii) file the micro entity certification first and then later pay issue fee in the micro entity amount?

The micro entity certification must accompany the issue fee payment in the micro entity amount or be filed in the application prior to payment of the issue fee payment in the micro entity amount.  Therefore, the applicant has discretion to do either (i) or (ii). 

Loss of Entitlement to Micro Entity Status

Question FEE4700: If an applicant is no longer eligible for micro entity status, can the applicant make a simple statement of loss of status without identifying which requirement(s) for micro entity status is no longer satisfied?

Yes, an applicant can make a simple statement that he/she/it is no longer eligible for micro entity status without identifying the particular reason(s) for loss of entitlement to micro entity status.

Question FEE4705: If an applicant loses eligibility for micro entity status, can the applicant pay the fee in the small or undiscounted amount, as appropriate, without notifying the Office of loss of micro entity status?

An applicant who loses entitlement to micro entity status cannot pay a fee in the small or undiscounted amount without first or simultaneously notifying the Office in writing of loss of micro entity status.

Question FEE4710:  If a micro entity applicant files a loss of entitlement to micro entity status and wants to claim small entity status, can the applicant do so in a single filing with the Office or is the applicant required to file both a loss of entitlement of micro entity status and a separate certification of small entity status?  

An applicant may file single notice to the USPTO indicating the concurrent loss of entitlement to micro entity status and certification of small entity status.

 

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Preissuance Submission

Question FEE5000:  A third party took advantage of the fee exemption when he/she made a first submission of three or fewer documents in an application but received notification that the submission was non-compliant.  If the third party makes a re-submission of three or fewer documents in the application, will he/she have to pay the $180 fee?

Yes, a third party must pay the $180 fee to make a re-submission of three or fewer documents in an application where the third party’s first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant.  The fee exemption does not apply to a resubmission because the third party will not be able to make the “first and only” statement under 37 C.F.R. 1.290(g). 

Question FEE5005:  A third party paid the $180 fee for a submission of five documents in an application.  The submission was found to be non-compliant.  If the third party makes a re-submission of the same five documents in the application, will he/she need to pay the $180 fee again?

Yes, for any re-submission, a third party must pay the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents).  In this instance, a fee of $180 would be required for the re-submission of the five documents.

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Patent Fee Setting

Effective Date

Question FEE6100:  On what date will I have to begin paying the new patent fee amounts set forth in the patent fee final rule?

Almost all fees included in the patent fee final rule become effective at 12:00 a.m. Eastern Daylight Time on Tuesday, March 19, 2013.  However, the following fee changes become effective at 12:00 a.m. Eastern Daylight Time on Wednesday, January 1, 2014:

- § 1.18(a)(1), (b)(1), (c)(1), and (d)(1):  patent issue and publication fees
- § 1.21(h)(1): fee for recording patent assignment, agreement, or other document - submitted electronically
- § 1.482(a)(1)(i), (a)(1)(ii), and (a)(2)(i):  PCT international preliminary and supplemental examination fees
- § 1.445(a)(1), (a)(4), (a)(2)(i), (a)(3), and (a)(1)(ii):  PCT  international application transmittal and search fees

New Patent Fee Schedule

QUESTION FEE6200:  I would like to ensure that I am paying the proper fee amount for a particular service.  How do I determine the new patent fee amounts?

A complete listing of the new patent fee amounts effective on March 19, 2013 is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

QUESTION FEE6250:  I understand that on March 19, 2013, the USPTO will offer reduced fees for micro entity applicants and patentees.  I have determined that I qualify as a micro entity applicant.  Where can I locate the new micro entity fees?

The USPTO has updated its fee schedule format to include a new column denoting micro entity fees.  A complete listing of the new fee amounts effective on March 19, 2013, including the new micro entity fee amounts, is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

Fee Calculations

Question FEE6300:  When calculating the fee for a second or subsequent RCE, do I count the number of RCEs filed for that application in total, or only the number of RCEs filed since the new fee was established on March 19, 2013?

An applicant is required to pay the fee for a second or subsequent RCE for the application based on the total number of RCEs filed for the application, regardless of other whether the first or an any earlier RCEs were filed prior to March 19, 2013.

Question FEE6305:   If an applicant filed an appeal brief and paid the fee for filing the brief before March 19, 2013, will the applicant also be required to pay the fee to forward an appeal required on or after March 19, 2013?

No, the USPTO has issued a Partial Waiver of the Appeal Forwarding Fee if the fee for filing an appeal brief was filed before March 19, 2013.  The waiver avoids the payment of extra fees that would otherwise result when an applicant paid both the appeal brief and accompanying fee on or before March 18, 2013, and also would be required to pay the fee to forward an appeal on or after March 19, 2013.  As a result of this waiver, an applicant will not be required to pay both fees.

Question FEE6310:  If an application is allowed prior to the implementation of the new fee schedule, but the applicant pays the issue and publication fees on or after March 19, 2013, does the applicant need to pay the new fee amount of $2,080 (i.e., large entity issue fee of $1,780 plus publication fee of $300), regardless of what appears on the Notice of Allowance and Fee(s) Due (PTOL-85)?

Yes, an applicant must pay the fee that is in effect on the date when payment is received by the Office.  The utility issue and publication fees due on March 19, 2013, are $1,780 and $300, respectively, for large entities for a total fee due of $2,080.  Likewise, if an application is allowed prior to January 1, 2014, but the applicant pays the issue and publication fees on or after January 1, 2014, the applicant is required to pay a large entity issue fee of $960 plus publication fee of $0 for a total of $960.

Question FEE6315:  If the patent Maintenance Fee Reminder notice was mailed prior to the implementation of the new fee schedule, but the maintenance fee is paid on or after March 19, 2013, after the new patent fee schedule becomes effective, does a patentee need to pay the new fee amount, regardless of what appears on the notice?

Yes, a patentee must pay the fee that is in effect on the date when payment is received by the Office.  The maintenance fees for a large entity due on March 19, 2013, are $1,600 for the first-stage payment due at 3.5 years; $3,600 for the second-stage payment due at 7.5 years; and $7,400 for the third-stage payment due at 11.5 years.

Question FEE6320:  What will happen if I forget to pay a new patent fee amount required on or after March 19, 2013, but instead pay the patent fee amount applicable before March 19, 2013 ?

The applicable fee amount is the amount in effect on the day the fee is paid.  If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees.  To avoid insufficient payment of fees, applicants are encouraged to provide authorization in the application file to charge fees to a specified Deposit Account.

 

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Miscellaneous

Question FEE7000:  Will fees collected in FY 2011 in excess of USPTO’s appropriations be deposited into the Reserve Fund created by Section 22 of the Act?

No, the reserve fund is only effective upon the first day of fiscal year 2012 (October 1).  So any fees collected in excess of USPTO’s appropriations in FY 2011 (see Question FEE2050) would not be deposited in this new fund.  Any fees collected in excess of FY 2012 amounts this coming year will be deposited in the new fund and, assuming the USPTO receives appropriations language giving the agency the authority to access these fees, would be available to the USPTO subject to submission of a reprogramming request.

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Last Modified: 12/11/2013 3:44:13 PM