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If I apply for a patent as a Micro Entity....

Vallejo, CA |

...will I later be unable to Assign or License my patent to an Entity With Income Exceeding $150,162 (based on 3 times 2011 median household income of that entity)?

If I do get approached by a Large Entity, and sell to them, I will lose my patent rights to them? If I file a provisional as a Micro, can I later file a non-provisional as a large with the same date (provisional app. date)? I am a majority shareholder for a corporation (electrical contractor) which generated $98K in gross profit (before expenses). I claimed $58K on my personal taxes. Assuming I meet all other requirements, I am legally able to claim Micro as an individual inventor, correct?

Attorney Answers 6


  1. Best answer

    Q: "“If I apply for a patent as a Micro Entity will I later be unable to Assign or License my patent to an Entity With Income Exceeding $150,162 … .”
    R: No, of course not. Your question assumes, however, that at that time you sell or license your patent it has, in fact, already matured into a patent based upon your patent application. If you're drafting and filing your own patent applicaton that is very, very bad assumption. I've never seen, read or heard about a monetarily or commercially significant patent that was drafted and filed by an independant inventor.

    Q: "If I do get approached by a Large Entity, and sell to them, I will lose my patent rights to them?"
    R: Your question makes no sense. If you sell a patent to anyone then you don't "lose" your patent rights -- you've sold those rights in exchange for money.

    Q: "If I file a provisional as a Micro, can I later file a non-provisional as a large with the same date (provisional app. date)?"
    R: Yes. In fact, if at any time during the examination of a patent application a micro-entity patent applicant no longer qualifies for micro-entity status then that applicant must inform the Patent Office.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  2. Claiming Micro Entity status to file a patent application will not allow you to assign your patent rights to a non-Micro Entity later. To qualify as a Micro Entity the applicant and/or inventor must satisfy the following:
    (1) Applicant qualifies as a "small entity",
    (2) Applicant and/or inventor must not have been named as the inventor on more than four previously filed patent applications;
    (3) Applicant and/or Inventor must not have had a gross income exceeding three times the median household income for that preceding calendar year ($150,162); and
    (4) Applicant and/or Inventor can not assign an ownership interest in the application to a party that does not qualify for Micro Entity status.


  3. No, claiming micro entity status when filing the application will not prevent you from LATER licensing or assigning the invention to a Large Entity. As long as you qualify at the time of filing, then you are entitled to claim micro entity status and pay the lower filing fee. And claiming micro entity status won’t hamper your options to license or assign later on. If you later license to a large entity, however, you will have to file a Notice of Loss of Micro Entity Status, and will not be entitled to micro entity fees going forward.

    Be careful, though. You don’t want to pay the lower fee when you’re not entitled to it. Doing so could put your patent’s enforceability at risk.

    Good luck

    (949) 390-2717 - Of course there's more to it! Plus, we don't have an attorney-client relationship. This brief comment is for information only, and must not be relied upon as legal advice.


  4. No, not at all, but if something changes in status during the patent application process, you will no longer be able to claim micro entity status.

    The answer to this question is for informational purposes only and does not form an attorney-client relationship.


  5. An applicant who loses entitlement to micro entity status cannot pay a fee in the small or undiscounted amount without first or simultaneously notifying the Office in writing of loss of micro entity status.
    Read more at: http://www.avvo.com/legal-guides/ugc/micro-entity

    http://www.cardinal-ip.com/ip-news-strategy/micro-entity-update/

    This is not a legal advice or solicitation, and does not create an attorney-client relationship. Consult with an attorney. I work for Cardinal Risk Mangement and Cardinal Intellectual Property, IP service companies, but not law firms. I also am the president of Vepachedu Educational Foundation Inc., which is a non profit educational foundation. I also write cultural and scientific compliations for the foundation. I also teach at Northwestern university as a guest lecturer. I also provide some pro-bono guidance on immigration and other issues through Indian American Bar Association. I also have a contract with Cardinal Law Group, a law firm, for IP projects. All this information is on my profile at Avvo and also at Linkedin. Any views/opinions expressed in any context are my personal views in individual capacity only, and do not represent the views and opinions of any firm, client, or anyone else, and is not sponsored or endorsed by them in any way.


  6. Initially filing a patent application and claiming micro entity status will in no way limit your ability to assign your interest in the application. However, if you enter into any sort of agreement or have any change in standing that disqualifies you from continuing to receive micro entity status, including assigning to an entity that does not qualify for micro entity status, as the attorney noted in his previous response, you must notify the PTO of such change.