509.03 Claiming Small Entity Status
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Section Frequency Chart
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(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
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As long as all of the rights remain in small entities, the fees established for a small entity can be paid.
- An assertion of entitlement to small entity status, including the mere payment of an exact small entity basic filing fee, inherently contains a certification under 37 CFR 11.18(b).
Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
I. ASSERTION BY WRITING
Small entity status may be established by the submission of a simple written assertion of entitlement to small entity status.
II. PARTIES WHO CAN ASSERT AND SIGN AN ENTITLEMENT TO SMALL ENTITY STATUS BY WRITING
A. Applications Filed On or After September 16, 2012
For applications filed on or after September 16, 2012, the written assertion of entitlement to small entity status can be signed by:
- the applicant;
- a patent practitioner of record or acting in a representative capacity;
- the inventor or a joint inventor, if the inventor is the applicant; or
- the assignee.
The assignee can sign a written assertion of small entity status even if the assignee is not the applicant or is a juristic entity.
B. Applications Filed Before September 16, 2012
For applications filed before September 16, 2012, the parties who can assert entitlement to small entity status by writing include all parties permitted by pre-AIA 37 CFR 1.33(b) to file a paper in an application, including a registered practitioner.
- Additionally, one of the individuals identified as an inventor, or a partial assignee, can also sign the written assertion.
By way of example, in the case of three pro se inventors for a particular application, one of the three inventors upon filing the application can submit a written assertion of entitlement to small entity status and thereby establish small entity status for the application. Where rights are divided between a person, small business concern, and nonprofit organization, or any combination thereof, only one party is required to assert small entity status. For example, where one of two inventors has assigned his or her rights in the invention, it is sufficient if either of the two inventors or the assignee asserts entitlement to small entity status.
Any inventor is permitted to submit a written assertion of small entity status, including individuals identified as inventors but who are not officially named of record as an executed oath or declaration has not yet been submitted.
- An actual inventor who has not been identified as an inventor (e.g., by way of application transmittal letter) or named as an inventor in the file record may not file a written assertion as to small entity entitlement.
III. PARTIES WHO CAN FILE THE WRITTEN ASSERTION ONCE SIGNED
For applications filed before September 16, 2012, a distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed.
- Pre-AIA 37 CFR 1.27(c)(2)(ii) and pre-AIA 37 CFR 1.33(b) permit one of several inventors to file as well as to sign a written assertion.
- The same is not true for a partial assignee. While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party.
IV. ASSERTION BY PAYMENT OF SMALL ENTITY BASIC FILING OR BASIC NATIONAL FEE
The payment of an exact small entity basic filing, basic national fee, or individual designation fee in an international design is also considered to be a sufficient assertion of entitlement to small entity status.
- An applicant filing a patent application and paying an exact small entity basic filing or basic national fee automatically establishes small entity status for the application even without any other assertion of small entity status.
Even though applicants can assert small entity status only by payment of an exact small entity basic filing, basic national fee, or individual designation fee in an international design application, the Office encourages applicants to also file a written assertion of small entity status as well as to pay the exact amount of the small entity basic filing, basic national fee, or individual designation fee.
- Even though small entity status is accorded where the wrong type of small entity basic filing fee or basic national fee is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing or basic national fee where selection of the wrong type of fee results in a deficiency.
- While an accompanying general authorization to charge any additional fees suffices to pay the balance due of the proper small entity basic filing or basic national fee, specific authorizations to charge fees under 37 CFR 1.17 or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing or basic national fee because they do not actually authorize payment of small entity amounts.
V. PARTIES WHO CAN ASSERT AND FILE SMALL ENTITY STATUS BY PAYMENT
Where small entity status is sought by way of payment of the basic filing or basic national fee, any party (including a third party), may submit payment, such as by check, and small entity status will be accorded.
VI. CONTINUED OBLIGATIONS FOR THOROUGH INVESTIGATION OF SMALL ENTITY STATUS
While small entity status is not difficult to obtain, it should be clearly understood that applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.
- The assertion of small entity status (even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed.
For example, where there are three pro se inventors, before one of the inventors pays the small entity basic filing or basic national fee to establish small entity status, the single inventor asserting entitlement to small entity status should check with the other two inventors to determine whether small entity status is appropriate.
If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern
VII. REMOVAL OF STATUS
Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
VIII. IMPROPERLY ESTABLISHING SMALL ENTITY STATUS
Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.
IX. REFUNDS BASED ON LATER ESTABLISHMENT OF SMALL ENTITY STATUS
(a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
(b) Date of payment.
(1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
(2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
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There is a three-month time period for requesting a refund of a portion of a non-small entity fee based on later establishment of small entity status.
X. CORRECTING ERRORS IN SMALL ENTITY STATUS
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, and the deficiency payment requirement
A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will not be considered to involve expiration of the patent.
- On the other hand, payment of a maintenance fee in the small entity amount where small entity status has not been established would result in the expiration of the patent unless the full maintenance fee due or a written assertion of small entity status is timely filed.
