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U.S. Patent and Trademark Office Fee Changes Benefit Startups and Academic Patent Applicants


Posted in Intellectual Property by MDDI Staff on January 24, 2014

Microentities can now get a discount of 75% on nearly all U.S. Patent and Trademark Office fees thanks to the Leahy-Smith America Invents Act. 


By Clark A. D. Wilson, Gardner Groff Greenwald & Villanueva PC

                                     

In a move that goes against the norm of service and government fees increasing steadily each year, the U.S. Patent and Trademark Office (PTO) has made several fee decreases introduced as part of the Leahy-Smith America Invents Act. Three example fee offerings include the microentity discount, the discount to international patent applications, and the decrease in issue fees.

Brush up on the skills you need to bring your medical device to market at MD&M West in Anaheim, CA, February 10–13, 2014.

Most interesting for many startup and academic patent applicants is the offering of a microentity discount of 75% on nearly all PTO fees. To qualify as a microentity, an applicant must meet one of two sets of conditions. Under the Gross Income Basis, an applicant for microentity status under the gross-income basis set forth in 37 CFR 1.29(a) must do the following:

  1. Certify qualification as a small entity (e.g., less than 500 employees).
  2. 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.
  3. 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 ($153,000).
  4. 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.

Under the alternative institution of higher education basis, set forth in 37 CFR 1.29(d) applicants must must do the following:

  1. Certify qualification as a small entity.
  2. Certify that either the applicant’s employer, from which he or she obtains the majority of his or her income, is an institution of higher education or 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.

For patent applicants with limited budgets, this microentity discount can offer a significant cost savings on PTO fees.

Many patent applicants want to protect their inventions internationally, and often file Patent Cooperation Treaty (PCT) applications to initiate this process. In the past, the PTO fees to file a new PCT application were very expensive because they were offered only as a large-entity basis. Effective January 1, 2014, most PCT filing fees are available at a 50% discount for small entities and also receive the 75% micro-entity discount for qualifying applicants. This presents applicants who might previously have avoided the process due to steep fees with an opportunity to seek international patent protection.

Finally, in addition to offering small-entity and microentity fee discounts, the PTO has lowered even its large-entity patent issue fees. After a patent application has been examined and allowed by the PTO, the office will only issue a full patent if the applicant pays an issue fee. The large-entity issue fees effective January 1, 2014, have been reduced by $820 for utility patents and $460 for design patents, with the small and microentity discounts applying if qualified. A complete PTO fee schedule is available on the PTO Web site.

Brush up on the skills you need to bring your medical device to market at MD&M West in Anaheim, CA, February 10–13, 2014.

Clark A.D. Wilson is a partner at the Atlanta-based IP firm Gardner Groff Greenwald & Villanueva PC and author of the blog MedicalDevicePatentCounsel.com. Wilson was previously an in-house patent attorney for the ophthalmic device division of Novartis and presently counsels a range of medical device innovators, from startups to established multinational corporations. His practice is primarily transactional, focusing on domestic and international patent prosecution as well as infringement opinion counseling. Named a Rising Star in IP by SuperLawyers in 2013 and 2014, Wilson is also board certified in IP Law by the Florida Bar Association. He holds a B.S. in civil engineering from the University of Miami and an M.Eng. in bioengineering from the University of Maryland. Reach im at CWilson@gardnergroff.com or (770) 984-2300.

 [image courtesy of STUART MILES/FREEDIGITALPHOTOS.NET]


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