Incorrectly claiming small entity status question
From Patentbarquestions
2001 OCT AM
15. Sam is a sole proprietor of Sam’s Labs, which has no other employees. Sam invented a
new drug while doing research under a Government contract. Sam desires to file a patent
application for his invention and assign it to Sam’s Labs. Sam has licensed Rick, also
a sole proprietor with no employees, to make and use his invention. Sam wants to claim
small entity status when filing a patent application for his invention. Sam also wants
to grant the Government a license, but will not do so if he will be denied small entity status.
Sam has limited resources and wants to know whether, how, and to what extent he may claim
small entity status. Which of the following is not accurate with respect to proper USPTO
procedure in relation to applications filed on or after January 1, 2001?
(A) Sam’s Labs is a small business concern for the purposes of claiming small entity
status for fee reduction purposes.
(B) If Sam grants a license to the Government resulting from a rights determination
under Executive Order 10096, it will not constitute a license so as to prohibit
claiming small entity status.
(C) The establishment of small entity status permits the recipient to pay reduced fees
for all patent application processing fees charged by the USPTO.
(D) Sam may establish small entity status by a written assertion of entitlement to
small entity status. A written assertion must: (i) be clearly identifiable; (ii) be
signed; and (iii) convey the concept of entitlement to small entity status, such as
by stating that applicant is a small entity, or that small entity status is entitled to
be asserted for the application or patent.
(E) While no specific words or wording are required to assert small entity status, the
intent to assert small entity status must be clearly indicated in order to comply
with the assertion requirement.
Explanation:
(C). Not all fees are subject to the small entity reduction. See, for example, 37 CFR 1.17(p).
As to (A), a small business concern for the purposes of claiming small entity status for fee reduction
purposes is any business concern that: (i) 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 no nprofit organization. and (ii) meets the standards set forth in
the appropriate section of the code of federal regulations to be eligible for reduced patent fees.
Sam’s Labs meets all of the elements required by 37 CFR 1.27 (a)(2). Statement (B) contains all of the
elements required by 37 CFR 1.27 (a)(4). Statement (D) contains all of the elements required by 37 CFR
1.27 (c)(1). Statement (E) contains all of the elements required by 37 CFR 1.27 (c)(1)(iii).
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2003 APR PM
13. Prior to filing a patent application for a client, a registered practitioner determined that the client was entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002, a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had assigned all rights in the invention that is the subject of the application to an entity that would not qualify for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following actions would be the best action for the practitioner to take?
(A) File a continuing application under 37 CFR 1.53(b) with the large entity filing fee and then file a letter of express abandonment under 37 CFR 1.138 in the original application after the continuing application has been accorded a filing date. (B) Promptly file a notification of loss of small entity status under 37 CFR 1.27(g) and, thereafter, pay large entity fees whenever any subsequent fees are required. (C) Wait until a Notice of Allowance is received and then timely submit the large entity issue fee along with a notification of loss of small entity status under 37 CFR 1.27(g). (D) File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including payment of the deficiency owed. (E) Pay the difference between the large entity filing fee and small entity filing fee and the difference between the large entity surcharge and small entity surcharge within two months from the mail date of the Notice to File Missing Parts.
ANSWER: (D) is the most correct answer. MPEP § 509.03, under the heading “Correcting Errors In Small Entity Status,” states “37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2).” (A), (B), (C), and (E) are not correct. Small entity status was not appropriate when the assertion of small entity status was filed with the application on November 1, 2002 and none of the actions recited in (A), (B), (C), and (E) would correct the error in claiming small entity status. The only mechanism for correcting a good faith error in claiming small entity status is by filing a request in compliance with 37 CFR § 1.28(c).
