Q) Small Entity Status (MPEP 500, Multiple Questions)

by patentbar on December 17, 2007 · 61 comments

in Exam Questions

Question 1

Who can claim small entity status? Questions dealing with small entity status can ask you to pick out an organization that can never have small entity status. An example would be: Which of the following can never be considered a small entity?

A. A University with 500 students that receives 37% of its funding from grants from large entity companies
B. A small business with net sales of $2 million/year
C. A small business with 200 employees and gross sales of $5.2 million/year
D. The US government
E. A taxi service that employs 520 people, and of those employees, 247 of them are independent contractors

Answer “E” – This is one of those types of questions that if you get tricked you will most likely waste heaps of time looking for obscure rules regarding independent contractors that simply don’t exist in the MPEP. Remember 1) independent inventor, 2) small businesses (< 500 employees), 3) nonprofit organizations, 4) the government, and 5) universities, which are all listed in the MPEP, qualify for small entity.

Question 2

Who can sign the assertion of small entity status?

509.03 Claiming Small Entity Status (2) Parties who can sign and file the written assertion. The written assertion can be signed by: (i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion; (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part. […] (g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. 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.

Question 3

What happens when small entity status changes before issuance? In particular, one question asked about an inventor that filed as small entity then assigned the rights to a large entity company. The company paid the small entity issue fee although they knew they were supposed to pay a large entity fee. Then the assignee came to the agent for advice about repercussions. ANSWER?

Question 4
The applicant accidentally paid large entity filing fee even though entitled to small entity status. Can he get a refund and how long does he have to apply?

37 CFR 1.28(a). Refunds when small entity status is later established; how errors in small entity status are excused.  (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. T he 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.

Question 5
Must small entity status be reasserted in a continuing application? Yes – this is covered in Chapter 500. Scan the exploded headings and you will find “509.03 Claiming Small Entity Status.” Skim that section and you will find the rules under “Assertions required”.

{ 61 comments… read them below or add one }

1 patentbarNo Gravatar December 18, 2007 at 10:04 pm

Note: What can an assignee not of record sign? Small entity status, MPEP 324, 300-19

509.03 Assignee must have full rights (not partial or not of record) to sign an assertion of small entitiy status.

Don’t these two statements cancel each other out? A question in the database asks what an assignee not of record can sign, and I am pretty sure the answer is small entity status.

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2 BigbadvoododaddyNo Gravatar July 5, 2011 at 9:09 pm

INCORRECT: A partial assignee can sign it but not file the statement with the PTO.

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3 patentbarNo Gravatar December 21, 2007 at 12:05 am

Question 5 – MPEP 509.03

(4)Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application
(including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.(d)When small entity fees can be paid.

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4 SeanNo Gravatar April 3, 2008 at 10:31 am

But why ‘E’ in Question 1? I am just beginning to study the MPEP. Thank you.

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5 samchuckNo Gravatar August 15, 2008 at 7:22 pm

Q 1:
why is the government a small entity. I dont see it listed in MPEP. See MPEP 509.02
having a license with the goverment under some special order is not a bar against claiming small entity status.
35 USC 41 says “director may waive a govt entity from paying a fee” but does not say it is a small entity (from April 2002 AM Q13).

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6 StephenNo Gravatar August 14, 2010 at 5:30 pm

I don’t believe a government agency can claim small entity status. I remember one of the old exams specifically having an answer that states that….”A government agency” is the answer for a question asking “which is not entitled to claim small entity status?”

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7 PGNo Gravatar March 11, 2013 at 6:31 pm

For what it’s worth. Stephen is correct. The government cannot claim small entity status, HOWEVER, an assignment of rights to the government does not result in losing small entity status.

8 patentbarNo Gravatar August 18, 2008 at 3:44 pm

Who can sign the Assertion of small entity status?

509.03 Claiming Small Entity Status (2) Parties who can sign and file the written assertion. The written assertion can be signed by: (i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion; (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part. […] (g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. 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.

1) the attorney/agent, 2) inventor or 3) assignee. Maybe I am just tired but the partial assignee is not making sense to me. Can someone clarify?

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9 dgspambotNo Gravatar August 18, 2008 at 6:30 pm

My understanding is that an assignee of an undivided part interest may sign but it must go through an attorney or agent of record.

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10 patentbarNo Gravatar August 22, 2008 at 10:00 am

Another person noted a question similar to #3 on their exam. “I think they had the small entity question where the small entity was claimed in error, a good faith mistake, and hence what should the applicant do?” What is the answer?

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11 StephenNo Gravatar August 14, 2010 at 5:32 pm

If you filed in good faith error you must pay the deficiency (the difference between the small entity and large entity fees). If, however, you filed for small entity status correctly, and then lose your small entity status you continue paying small entity fees until the issue fees or maintenance fees come due, then you pay large entity fees. So basically, you have to be cautious of whether the applicant had a right to claim small entity status or not. If he/she had the right, they get to keep the status until the patent issues, however if they didn’t they have to pay the deficiency.

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12 BigbadvoododaddyNo Gravatar July 5, 2011 at 9:11 pm

This is a good and correct explanation

13 KimNo Gravatar March 11, 2009 at 1:19 am

04.03.13p

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).

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14 matt30No Gravatar May 7, 2009 at 4:26 pm

one of the old exams has a question about who does not qualify as a small entity.

The answer key says “government”.

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15 passthepatentbarNo Gravatar May 22, 2009 at 1:41 pm

Perhaps the question meant a company who has licensed to a federal agency? If so, then the company may be exempt. 37 CFR 1.27(a)(4); MPEP 509.02.

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16 JohnNo Gravatar June 8, 2009 at 3:24 pm

I believe question 3 is from an old exam. The answer can be found at 509.03.VII

509.03.VII – 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

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17 Big TexNo Gravatar November 25, 2009 at 4:44 pm

If, as the question stated, SES is inappropriate but small entity fees are still paid, the answer is found in 509.03. This could mean they lose the ability to enforce their patent.

VIII. IMPROPERLY ESTABLISHING SMALL ENTITY STATUS

37 CFR 1.27(h) indicates that 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… In addition, improperly and with intent to deceive establishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office.

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18 RLNo Gravatar September 21, 2013 at 2:47 pm

John, I thought the same until I re-read the question. SES was incorrectly established because the invention was assigned to a non-SES entity BEFORE the filing of the application. Had SES been properly established at the filing of the application and subsequently changed, then your post would be correct.

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19 powerspec2008No Gravatar July 3, 2009 at 4:04 pm

MPEP 905.02.VI

VI. RIGHTS HELD BY GOVERNMENT ORGANIZATIONS

Also, although

the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules,

a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c)(4) will not preclude
the proper claiming of small entity status. Furthermore,
a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).

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20 DerrickNo Gravatar September 8, 2009 at 12:15 pm

Q13 in the 2002 AM exam: which one does never qualify as small entity:

(A) A nonprofit organization.
(B) A two-person business concern with a $4,000,000 income.
(C) A federal government agency.
(D) A university in Canada.
(E) A person.

Answer key says C) A federal government agency. Explains that although under sec 41(e) Director may waive fees under certain circumstances for federal agency, this does not make a federal agency a small entity under CFR 1.27.
Probably, the conditions given in choice E) of the question quoted in the very beginning, would create a situation where the taxi business would qualify as small entity.

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21 InZaneNo Gravatar October 31, 2009 at 12:20 pm

Derrick, you essentially raised an interesting question about whether or not contractors count toward the small entity 500 number. Though the 500 employee number is not actually located in the MPEP directly (not that I can find) and really shouldn’t be tested on. The answer appears to be yes they do count toward the 500 numbers. Here’s the reasoning:
§ 1.27 Definition of small entities…
(a) Definition of small entities…
(2)Small business concern.
(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.

And from 13 CFR 121.802 (around the time period of E8r4):

[Code of Federal Regulations]
[Title 13, Volume 1]
[Revised as of January 1, 2006]
From the U.S. Government Printing Office via GPO Access
[CITE: 13CFR121.802]

[Page 330]

TITLE 13–BUSINESS CREDIT AND ASSISTANCE

CHAPTER I–SMALL BUSINESS ADMINISTRATION

PART 121_SMALL BUSINESS SIZE REGULATIONS–Table of Contents

Subpart A_Size Eligibility Provisions and Standards

Sec. 121.802 What size standards are applicable to reduced patent
fees programs?

A concern eligible for reduced patent fees is one:
(a) Whose number of employees, including affiliates, does not exceed 500 persons; and
(b) Which has not assigned, granted, conveyed, or licensed (and is
under no obligation to do so) any rights in the invention to any person
who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.

– The “including affiliates” here seems to me to suggest that contractors would be included.

It appears that the government (or federal agency) can never qualify as a small entity because they are explicitly excluded from being in the “nonprofit” category (MPEP 509.02, part VI which states “Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules…” Since they don’t qualify as a person, and I really don’t think they would ever consider themselves a “small business”, that means that they would not be a small entity for reduced fee purposes.

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22 Big TexNo Gravatar November 17, 2009 at 5:06 pm

Regarding response #7: I believe the answer can be found in MPEP 509.03 and 37 CFR 1.28(c).

(c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:

(1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. See § 1.4(b).

(2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.

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23 ABNo Gravatar December 12, 2009 at 4:29 pm

Regarding whether assignee not of record can sign:

VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed ( MPEP § 201.06(d)); signs a small entity statement ( MPEP § 509.03); signs a statement of common ownership of two inventions ( MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement ( MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable ( MPEP § 715.04); signs a certificate un­der 37 CFR 1.8 ( MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 ( MPEP § 2210).

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24 Emily M.No Gravatar February 13, 2010 at 9:06 pm

Got this today. Easy once I had seen this post!

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25 ABNo Gravatar December 12, 2009 at 4:35 pm

“Notwithstanding” means “Despite” (I had to look it up to be sure).

(2) Parties who can sign and file the written assertion. The written assertion can be signed by:

(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;

(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or

(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.

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26 LLINo Gravatar January 3, 2010 at 2:45 am

I found this website created by intellectual property attorneys, Brown & Michael and it discusses whether or not their clients are entitled to the small entity fee status. Check it out… http://www.bpmlegal.com/howsmall.html

I found it pretty informative!

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27 SwingNo Gravatar September 25, 2010 at 12:10 am

Thx for the link!!

I think “D.US Government” is the answer to Q1.

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28 epepNo Gravatar March 7, 2011 at 11:41 am

Saw both 2. and 4. in a Mar. 2011 test.

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29 BryanNo Gravatar March 13, 2011 at 5:21 pm

Question 4 above should be contrasted with Question 26 from April 2002 AM. In that question, Small entity was ALREADY established, but the person paid the large entity fee by mistake. According to the answers, the person had 2 years to get a refund.

26. Which of the following is not in accord with proper USPTO practice and
procedure?
(A) If a practitioner, “by mistake,” files an application and basic filing fee, the
submission of the filing fee with the application is treated by the Office as
not a fee paid by mistake, and the fee will not be refunded.
(B) If, in April 2001, a practitioner files an application, properly establishes
the applicant’s small entity status, and “by mistake” pays the filing fee by
submitting a check drawn in the amount that is twice the amount of the
small entity filing fee, a refund of the excess fee may be obtained upon
request filed any time during pendency of the application and life of any
patent granted on the application.
(C) The paragraphs of the specification of an original utility patent application
filed in January 2001 may, but are not required to be numbered at the time
the application is filed.
(D) If a provisional application is filed in a language other than English, an
English language translation of the non-English language provisional
application will not be required in the provisional application.
(E) If a table having more than 50 pages of text is submitted on compact disc,
the specification of a patent application must contain an incorporation-byreference
of the material on a compact disc in a separate paragraph,
identifying each compact disc by the names of the files contained on each
compact disc, their date of creation, and their sizes in bytes.

26. ANSWER: (B) is the most correct answer. Under 37 C.F.R. § 1.26(b), “Any request for
refund must be filed within two years from the date the fee was paid.” See, “Changes to
Implement the Patent Business Goals, Final Rule,” 65 F.R. 54604, 54608, middle column
(September 8, 2000), 1238 O.G. 77 (Sept. 19, 2000).

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30 patenttipsNo Gravatar March 17, 2011 at 2:30 pm

I think 2 years is the standard period for refund EXCEPT for overpayment of entity fees.

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31 patenttipsNo Gravatar March 17, 2011 at 2:32 pm

See rule 1.28

§ 1.28 Refunds when small entity status is later established; how errors in small entity status are excused.

(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.

32 fengyuwuzuNo Gravatar October 7, 2011 at 3:20 pm

what about the Small Entity Status was established in the beginning but “by mistake” large entity fee was paid?

33 BeckerNo Gravatar May 17, 2011 at 3:14 pm

I got several of these questions 5/16/2011.

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34 SarahNo Gravatar May 18, 2011 at 3:48 pm

Got this today 5/18/11

One where you need to know the fees reduce (filing fees, extension fees, disclaimer fees, maintenance fees ARE, document title fee are NOT)

One where you need to know that an assignee NOT of record can SIGN a S.E.S. (but not file!)

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35 BigbadvoododaddyNo Gravatar July 5, 2011 at 9:27 pm

That should be partial assignee not of record – can sign, but not file.
Since an assignee of the entire interest may sign – it is one of those listed where ownership need not be established, 324.

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36 DannyNo Gravatar September 15, 2011 at 1:07 pm

Where in the MPEP does it state that the partial assignee not of record can sign? i did not see this mentioned in §405.

37 SolNo Gravatar April 5, 2012 at 10:46 pm

The same is not true for a partial assignee. 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).

partial or whole
of record or not
these are two things with four combinations
a partial assignee not of record can sign cannot file
a partial assignee of record can sign cannot file
a whole assignee not of record can sign and file
a whole assignee of record can sign and file

38 BigbadvoododaddyNo Gravatar July 5, 2011 at 9:05 pm

INCORRECT ANSWER LISTED FOR Q1
The answer is D – the government.

E -can claim small entity status, since contractors do not count towards head count of the company, however affiliates and subsidiaries do. Contractors are hired, exactly for that reason, to show a smaller headcount for payroll taxes and other accounting and valuation principles.

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39 BigbadvoododaddyNo Gravatar July 5, 2011 at 9:21 pm

the above identified small business concern [i.e., IBI] qualifies as a small business concern as defined in 13 CFR 121.3-18, and reproduced in 37 CFR 1.9(d), for purposes of paying reduced fees under section 41(a) and (b) of Title 35, United States Code, in that the number of employees of the concern, including those of its affiliates, does not exceed 500 persons. For purposes of this statement, (1) the number of employees of the business concern is the average over the previous fiscal year of the concern of the persons employed on a full-time, part-time or temporary basis during each of the pay periods of the fiscal year, and (2) concerns are affiliates of each other when either, directly or indirectly, one concern controls or has the power to control the other, or a third party or parties controls or has the power to control both.

So I stand corrected. Both D and E are incorrect for Q 1

Everyone scratch your heads :)

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40 DanielNo Gravatar August 3, 2011 at 11:09 am

Got the one where the answer is D) GOVERNMENT and one that was phrased who CANNOT sign –> Partial Assignee on 7/29/2011

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41 SunnyNo Gravatar September 14, 2011 at 3:39 am

I think partial assignee can sign, they just can’t file…

MPEP 509.03
III.PARTIES WHO CAN FILE THE WRITTEN ASSERTION ONCE SIGNED
A distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. 37 CFR 1.27(c)(2)(ii) and 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. 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).

Please correct me if I am wrong.

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42 DannyNo Gravatar September 15, 2011 at 1:16 pm

Here is the source for the fact that the partial assignee not of record can sign. In 1.27(2)(i) it says that parties of 1.33(b) can sign. There, it addresses an assignee not of record who acts in a REPRESENTATIVE CAPACITY can sign AND file on behalf of the inventor.

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43 MIANo Gravatar September 25, 2011 at 1:37 am

I cannot find anywhere where it says that an assignee of record who acts in a REPRESENTATIVE CAPACITY can sign AND file on behalf of the inventer?? Unless the word “resort” under 1.27(c)(2)(iii) can be interpreted as acting in a rep cap way..

§ 1.27
(c)Assertion of small entity status.
(2)Parties who can sign and file the written assertion. The written assertion can be signed by:
(iii)An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.

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44 JamieNo Gravatar July 18, 2012 at 3:17 pm

1.27(c)(2)(i) refers to 1.33(b) where it only mention “patent PRACTITIONER not of record” and does not mention anything related to assignee not of record!! Am I correct?

45 JamieNo Gravatar July 18, 2012 at 3:28 pm

assignee not of record can sign assertion of small entity.
Please refer to MPEP 509.03 II & III: An assignee asserting small entity status is not required to submit a 37 CFR 3.73(b) certification whether the assignee is a partial assignee or an assignee of the entire right, title, and interest, (but see paragraph III. below).

46 SolNo Gravatar April 5, 2012 at 9:49 pm

US goverment is not a small business

VI.RIGHTS HELD BY GOVERNMENT ORGANIZATIONS
Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c)(4) will not preclude the proper claiming of small entity status. Furthermore, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).

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47 SolNo Gravatar April 5, 2012 at 9:56 pm

Now the MEPE does not tell the size, how can anyone locate this 500 information? Search will not help at all.

A concern eligible for reduced patent fees is one:

(a) Whose number of employees, including affiliates, does not exceed 500 persons; and

(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.

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48 TheGhostOfBilskiNo Gravatar April 5, 2012 at 10:10 pm

I am almost positive there is no direct reference to the “500” specific size in the MPEP. The relevant CFR are at 121.801 through 121.805, but to my knowledge are not replicated in the MPEP Appendices. That said, just know >500.

p.s. InZane replicated the relevant CFR above.

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49 SolNo Gravatar April 5, 2012 at 10:50 pm

Thanks. Headache to read these 68 questions as there are no official correct answers. Basically, it is kind of doing true/false questions on every comment.

50 MT40No Gravatar July 31, 2012 at 9:59 pm

MPEP 509.02 points to the standards of the rules stated above concerning the number of employees and the size of a small entity:

(ii)Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.

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51 chemEgirlNo Gravatar August 7, 2012 at 6:18 am

so would the answer to (1) be the D or E? Further, is it a general rule of thumb for “small entity” status to have 500 employees or less?

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52 JTKNo Gravatar September 17, 2012 at 6:43 pm

If i rember from PLI class, it is less than 500 employess, contract employees do not count. Thats why the taxi service can get small entity status, becaused of the 520, 247 are contract employees. I will search for the MPEP section.

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53 tappylilyiNo Gravatar September 17, 2012 at 7:03 pm

I think it’s the government, in accordance with Question 13, April 2002 AM exam, but the director can allow applicants who licensed their invention to the government to pay small entity fees, but that doesn’t make the government a small entity.

54 tappylilyiNo Gravatar September 17, 2012 at 7:18 pm

Also, MPEP 509.02, Rights Held by Government Organizations explicitly state that federal government agencies do not qualify as nonprofit organizations to qualify to pay for SES fees, so D, in my opinion, is the right answer.

55 JTKNo Gravatar September 21, 2012 at 5:59 pm

I agree, the MPEP does not state specifically but

§ 121.106 How does SBA calculate number of employees?

(a) In determining a concern’s number of employees, SBA counts all individuals employed on a full-time, part-time, or other basis. This includes employees obtained from a temporary employee agency, professional employee organization or leasing concern. SBA will consider the totality of the circumstances, including criteria used by the IRS for Federal income tax purposes, in determining whether individuals are employees of a concern. Volunteers ( i.e. , individuals who receive no compensation, including no in-kind compensation, for work performed) are not considered employees.

SO i think the government is right based on tappylilyi post above

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56 fluidNo Gravatar September 23, 2012 at 8:57 am

I had one about canceling small entity status after improperly paying a small entity fee. 9/22/2012.

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57 RandomNo Gravatar October 15, 2012 at 8:31 pm

Got Question 3 variant today.

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58 MehNo Gravatar August 5, 2013 at 4:46 pm

Got a question asking what can an assignee not of record sign –> small entity assertion, 8/5/2013, MPEP 8R9

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59 Hoping2PassNo Gravatar August 6, 2013 at 12:08 pm

@Meh – thanks

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60 SarahNo Gravatar August 28, 2013 at 3:00 pm

I think the answer to Q1 is D (the US government). If look at the call of the question (can never), D is more proper. The taxi company is not small entity at that current situation, but it may be eligible after terminate the contractors. On the other hand, US govenment can NEVER claim small entity status no matter what.

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61 patentmanNo Gravatar August 1, 2015 at 4:46 pm

Wrong since a license to the Government resultingfrom a rights determination under Executive Order10096 does not constitute a license so as to prohibitclaiming small entity status by a person under 37CFR 1.27(a)(1). MPEP 509.03 VI paragraph 1.

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