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2550    Entity Status Discounts [R-07.2015]

I.CLAIMING ENTITLEMENT TO AN ENTITY STATUS DISCOUNT

Reduced maintenance fees are available for patentees that can establish entitlement to small or micro entity status.

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. 37 CFR 1.27(c)(2) specifies who can sign and file the written assertion of small entity status. A written assertion of small entity status is only required to be filed once and will remain effective until changed. See MPEP §§ 509.02 and 509.03 regarding the requirements for qualifying as a small entity and the requirements for making an assertion of small entity status.

In order to establish micro entity status for the purpose of paying a maintenance fee, a written certification of micro entity status must be filed prior to or at the time the maintenance fee is paid in the micro entity amount. A certification of micro entity status must be signed by a person authorized under 37 CFR 1.33(b). See MPEP § 509.04 regarding the requirements for qualifying as a micro entity as well as the requirements for certifying micro entity status.

The refund provisions of 37 CFR 1.28(a) for later submitted small entity assertions do apply to maintenance fees. However, the process in 37 CFR 1.28(a) for later establishment of small entity status is not applicable to later submitted micro entity certifications. Accordingly, no refunds are available for later establishment of micro entity status.

II.REMOVAL OF ENTITY STATUS

Notification of any change in status resulting in loss of entitlement to an 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 or micro entity is no longer appropriate. 37 CFR 1.27(g)(2) requires that a notification of loss of entitlement to small entity status be in the form of a specific written notification, rather than only payment of a non-small entity fee. Similarly, 37 CFR 1.29(i) provides that notification of a 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. See MPEP § 509.04(e) for further information regarding notifying the Office of a loss of entitlement to micro entity status, including notifying the Office of a loss of entitlement to both micro and small entity status. All notifications to the Office regarding loss of entity status must be signed by a party identified in 37 CFR 1.33(b). 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). Similarly 37 CFR 1.29(g) serves as a reminder of the necessity to check for the loss of micro entity status prior to paying any fee in the micro entity amount.

If status as a small or micro entity has been previously established by filing an assertion of small entity status or certification of micro 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 or micro entity status at this point if the status as a small or micro entity has been established and is still proper. After establishing small or micro entity status, it is not necessary to file a new assertion of small entity status or certification of micro entity status, even if rights have been transferred from one small entity to another, or from one micro entity to another. The requirement is to notify the Office of the loss of entitlement and to pay the maintenance fee in the proper amount, where appropriate.

III.PAYMENTS NOT MATCHING THE ENTITY STATUS OF RECORD

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. An Overpayment Notice will be sent if Office records indicate establishment of an entity status (small or micro) entitling the patentee to a reduction in the fee amount submitted. An Underpayment Notice will be sent if Office records indicate that the patentee has not established entitlement to the entity status (small or micro) corresponding to the discounted amount submitted.

Where an Overpayment Notice is sent, the required reply depends on whether the entity status of record is correct. If the patentee determines entitlement to the entity status of record no longer exists or cannot be verified, the appropriate loss of entitlement notification must be filed. See 37 CFR 1.27(g)(2) regarding notification of loss of entitlement to small entity status. See 37 CFR 1.29(i) regarding notification of loss of entitlement to micro entity status. The loss of entitlement notification must be filed by mail, facsimile, or EFS-Web because the online payment system cannot accept entity status documents. A non-extendable ONE MONTH period from the mailing date of the notice will be provided for filing a notification of loss of entitlement to small or micro entity status. However, if additional money is required to complete an undiscounted payment of the maintenance fee and any required surcharge under 37 CFR 1.362(e), the reply (including the additional money and the loss of entity status entitlement notice) must be filed within the earlier of: (A) the 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). Absent a timely reply to the Overpayment Notice, the Office will apply the maintenance fee in the reduced amount corresponding to the entity status of record and refund the overpayment amount. Accordingly, if the patentee is actually entitled to the entity status of record, no reply to the Overpayment Notice is necessary.

Where an Underpayment Notice is sent, the required reply depends on whether the entity status of record is correct. If the patentee determines that the entity status of record is correct, the reply including the additional money required for a sufficient payment in the correct higher amount, including any necessary surcharge under 37 CFR 1.362(e), must be timely filed. If the patentee determines the entity status of record is not correct, the reply must include any additionally required money including any necessary surcharge under 37 CFR 1.362(e), and the appropriate entity status document (e.g., written assertion of small entity status under 37 CFR 1.27 or certification of micro entity status under 37 CFR 1.29). The entity status document must be filed by mail, facsimile, or EFS-Web because the online payment system cannot accept entity status documents. Whether or not the entity status of record is correct, 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). 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 Underpayment Notice, the Office will return the amount received. If the amount received was returned, payment of the maintenance fee and any necessary surcharge in the correct amount must be filed within the time remaining under 37 CFR 1.362, including the grace period provided by 37 CFR 1.362(e). Note that an entity status document may also be required to be filed with the payment in order to establish what the correct amount is (e.g., if the patentee determines that the entity status of record is not correct). If the payment was returned and there is no time remaining in the grace period provided by 37 CFR 1.362(e), a petition under 37 CFR 1.378 for acceptance of a delayed maintenance fee payment must be filed in order to seek acceptance of an unintentionally delayed maintenance fee. See MPEP § 2590.

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Last Modified: 11/04/2015 11:01:47