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.
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.
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?
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.
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”.