The America Invents Act of 2012 is best known for establishing “the First Inventor to File” system. However it also created or defined “Micro-Entities”. Patent filing fees for micro-entities are discounted. The discount is 75 percent of the fees paid by non small entities, i.e., entities have more than 500 employees. Unfortunately the definition of a Micro-Entity is convoluted.
First, a Micro-Entity is a small entity, i.e., it has fewer than 500 employees. See 37 CFR 1.27. Warning affiliates of the entity are counted in the 500 employee limitation.
Second, the Applicant (an entity owning the invention but not the inventor) or the inventor has not been named as the inventor on 5 or more previous patent applications. That qualifies most first time inventors or applicants. In addition, the following do not apply to the previous patent application limit: (i) provisional applications or applications filed in another country, (ii) PCT applications that did not enter the Chapter II or “national stage” and (iii) applications that were assigned to a past employer.
Third, the Applicant or inventor had a gross income below $184,000.00, i.e., 3 times the median household income as determined by the IRS. Warning this income limitation is intended to change annually and you must certify you meet the current income limitation each time you pay a discounted fee.
Fourth, the Applicant or inventor has not conveyed an ownership interest or license in the subject invention to an entity that does not meet the $184,000.00 gross income limitation.
Entities qualified to pay the 75 percent discount fees (micro-entity fees) also include an Applicant working for an institution of higher education or that have assigned an ownership interest to the employer institution of higher education.
Note the discounted fees apply to filing, searching, examining, issue as well as the maintenance fees. The combined fees (filing, search & examination) due at filing of the non-provisional application total $430.00. The filing fee for a provisional application is $75.00. Below is a listing of the current micro- entity fees:
Maintenance fee year 3.5 $400.00
year 7.5 $900.00
year 11.5 $1,850.00
Copyright David McEwing 2019