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2550    Small Entity Status [R-08.2012]

In order to establish small entity status for the purpose of paying a maintenance fee, a written assertion of entitlement to small entity status must be filed prior to or with the maintenance fee paid as a small entity. A written assertion is only required to be filed once and will remain effective until changed.

37 CFR 1.366(f) serves as a reminder to patentees of the necessity to check for the loss of small entity status prior to paying each maintenance fee on a patent. This is also a requirement of 37 CFR 1.27(g). The notification of any change in status resulting in loss of entitlement to small entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. If status as a small entity has been previously established by filing an assertion of small entity status and such status is checked and found to be proper, no notification is required. It is not necessary to file a new assertion establishing small entity status at this point if the status as a small entity has been established and is still proper even if rights have been transferred to a small entity after the assertion of small entity status. The requirement is to notify the Office of the loss of entitlement and to pay the maintenance fee in the proper amount for other than a small entity where appropriate. The refund provisions of 37 CFR 1.28(a) for later submitted small entity assertions do apply to maintenance fees.

If a payment is submitted that conflicts with the Office record of the patentee’s entity status, a notice relating to entity status will be sent to the fee submitter. A Notice of Overpayment of Patent Maintenance Fee (PTO-211) will be sent if the payment was submitted in the large entity amount, but Office records indicate that the patentee is a small entity. A Notice of Non-Acceptance of Small Entity Patent Maintenance Fee (PTO-2140) will be sent if the payment was submitted in the small entity amount, but Office records indicate that the patentee is a large entity.

Where a Notice of Overpayment of Patent Maintenance Fee (PTO-211) is sent, the time period for reply depends on whether the reply requires additional money for sufficient payment of the large entity maintenance fee. Where no additional money is required, the fee submitter will be given a non-extendable ONE MONTH period from the mailing date of the notice to file a written notification of change in status from small to large entity. Note that if no additional money was required for sufficient payment of the large entity maintenance fee on the date the payment was received, no additional money will be required with the timely reply even if the patent entered the grace period under 37 CFR 1.362(e) after the mailing date of the notice. Where additional money is required, the reply (including the additional money and the written notification of change in status from small to large entity) must be filed within the earlier of: (A) a non-extendable ONE MONTH period from the mailing date of the notice; or (B) any time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). Note that if a previously unpaid surcharge has come due by the time the reply requiring additional money is filed, sufficient payment will require payment of the surcharge as well as any additional money required to complete the large entity maintenance fee amount. Absent a timely reply to the Notice of Overpayment of Patent Maintenance Fee (PTO-211), the Office will apply the small entity maintenance fee payment amount to the patent and refund the overpayment amount. Accordingly, if the patentee is actually entitled to small entity status, no reply to the Notice of Overpayment of Patent Maintenance Fee (PTO-211) is necessary. In the event money was refunded by the Office as an "overpayment amount," but the patentee is a large entity, provided the patent has not already expired, the fee submitter must file a resubmission of the refunded money together with the required written notification of change in status from small to large entity within the time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). In this situation, if the original payment amount received by the Office is less than the current amount required for sufficient payment of the large entity maintenance fee, the resubmitted money previously refunded by the Office as an "overpayment amount" must be accompanied by additional money.

Where a Notice of Non-Acceptance of Small Entity Patent Maintenance Fee (PTO-2140) is sent, the reply must be filed within the earlier of: (A) a non-extendable ONE MONTH period from the mailing date of the notice; or (B) any time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). The requirements of the reply depend on whether the patentee is entitled to small entity status. If the patentee is entitled to small entity status, a written assertion of entitlement to small entity status is required together with any additional money required for sufficient payment of the small entity maintenance fee. If the patentee is a large entity patentee, the reply must include payment of the additional money required for sufficient payment of the large entity maintenance fee. Note that if a previously unpaid surcharge under 37 CFR 1.362(e) has come due by the time the reply is filed, sufficient payment will require payment of the surcharge as well as any additional money required to complete the required maintenance fee amount. Absent a timely reply to the Notice of Non-Acceptance of Small Entity Patent Maintenance Fee (PTO-2140), the Office will refund the amount received. If the amount received was refunded and the patentee is a small entity, provided the patent has not already expired, sufficient payment of the small entity maintenance fee and the required written assertion of entitlement to small entity status must be filed within the time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). If the amount received was refunded and the patentee is a large entity, provided the patent has not already expired, sufficient payment of the large entity maintenance fee must be filed within the time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e).

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Last Modified: 03/27/2014 10:10:34