Claiming Small Entity Status

37 CFR 1.27  Definition of small entities and establishing status as a small entity to

permit payment of small entity fees; when a determination of entitlement to small

entity status and notification of loss of entitlement to small entity status are

required; fraud on the Office.

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(b)

Establishment of small entity status permits payment of reduced

fees.

(1) A small entity, as defined in paragraph (a)

of this section, who has properly asserted entitlement to small entity

status pursuant to paragraph (c) of this section will be accorded small

entity status by the Office in the particular application or patent in

which entitlement to small entity status was asserted. Establishment of

small entity status allows the payment of certain reduced patent fees

pursuant to

35 U.S.C.

41(h)(1)

.

(2) Submission of an original utility

application in compliance with the USPTO patent electronic filing system

by an applicant who has properly asserted entitlement to small entity

status pursuant to paragraph (c) of this section in that application

allows the payment of a reduced filing fee pursuant to

35 U.S.C.

41(h)(3)

.

(c)

Assertion of small entity status.

Any party (person, small

business concern or nonprofit organization) should make a determination,

pursuant to paragraph (f) of this section, of entitlement to be accorded small

entity status based on the definitions set forth in paragraph (a) of this

section, and must, in order to establish small entity status for the purpose of

paying small entity fees, actually make an assertion of entitlement to small

entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this

section, in the application or patent in which such small entity fees are to be

paid.

(1) Assertion by writing. Small entity status

may be established by a written assertion of entitlement to small entity

status. A written assertion must:

ose of

paying small entity fees, actually make an assertion of entitlement to small

entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this

section, in the application or patent in which such small entity fees are to be

paid.

(1) Assertion by writing. Small entity status

may be established by a written assertion of entitlement to small entity

status. A written assertion must:

(i) Be clearly identifiable;

(ii) Be signed (see paragraph (c)(2) of

this section); and

(iii) Convey the concept of entitlement to

small entity status, such as by stating that applicant is a small

entity, or that small entity status is entitled to be asserted for

the application or patent. While no specific words or wording are

required to assert small entity status, the intent to assert small

entity status must be clearly indicated in order to comply with the

assertion requirement.

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(3)

Assertion by payment of the small entity basic filing,

basic transmittal, basic national fee, international search fee,

or individual designation fee in an international design

application.

The payment, by any party, of the exact

amount of one of the small entity basic filing fees set forth in

§ 1.16(a), (b), (c), (d), or

(e)

, the small entity transmittal fee set

forth in

§ 1.445(a)(1)

or

§ 1.1031(a)

,

the small entity international search fee set forth in

§ 1.445(a)(2)

to a Receiving Office other than the United States Receiving Office

in the exact amount established for that Receiving Office pursuant

to

PCT Rule 16

, or

the small entity basic national fee set forth in

§

1.492(a)

, will be treated as a written

assertion of entitlement to small entity status even if the type of

basic filing, basic transmittal, or basic national fee is

inadvertently selected in error. The payment, by any party, of the

small entity first part of the individual designation fee for the

United States to the International Bureau (

§

1.1031

) will be treated as a written

assertion of entitlement to small entity status.

written

assertion of entitlement to small entity status even if the type of

basic filing, basic transmittal, or basic national fee is

inadvertently selected in error. The payment, by any party, of the

small entity first part of the individual designation fee for the

United States to the International Bureau (

§

1.1031

) will be treated as a written

assertion of entitlement to small entity status.

(i) If the Office accords small

entity status based on payment of a small entity basic filing

or basic national fee under paragraph (c)(3) of this section

that is not applicable to that application, any balance of

the small entity fee that is applicable to that application

will be due along with the appropriate surcharge set forth in

§

1.16(f)

, or

§

1.16(g).

(ii) The payment of any small entity

fee other than those set forth in paragraph (c)(3) of this

section (whether in the exact fee amount or not) will not be

treated as a written assertion of entitlement to small entity

status and will not be sufficient to establish small entity

status in an application or a patent.

(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.

,

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. Any fee,

other than the small entity basic filing fees and the small entity national

fees of paragraph (c)(3) of this section, can be paid in the small entity

amount only if it is submitted with, or subsequent to, the submission of a

written assertion of entitlement to small entity status, except when refunds

are permitted by

§ 1.28(a)

.

(e)

Only one assertion required.

(1) An assertion of small entity status need

only be filed once in an application or patent. Small entity status, once

established, remains in effect until changed pursuant to paragraph (g)(1)

of this section. Where an assignment of rights or an obligation to assign

rights to other parties who are small entities occurs subsequent to an

assertion of small entity status, a second assertion is not required.

(2) Once small entity status is withdrawn

pursuant to paragraph (g)(2) of this section, a new written assertion is

required to again obtain small entity status.

(f)

Assertion requires a determination of entitlement to pay small

entity fees.

Prior to submitting an assertion of entitlement

to small entity status in an application, including a related,

continuing, or reissue application, a determination of such entitlement

should be made pursuant to the requirements of paragraph (a) of this

section. It should be determined that all parties holding rights in the

invention qualify for small entity status. The Office will generally not

question any assertion of small entity status that is made in accordance

with the requirements of this section, but note paragraph (h) of this

section.

determination of such entitlement

should be made pursuant to the requirements of paragraph (a) of this

section. It should be determined that all parties holding rights in the

invention qualify for small entity status. The Office will generally not

question any assertion of small entity status that is made in accordance

with the requirements of this section, but note paragraph (h) of this

section.

(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.

(2)

Notification of loss of entitlement to small entity status is

required when issue and maintenance fees are due.

Notification of a loss of entitlement to small entity status must be

filed in the application or patent prior to paying, or at the time of

paying, the earliest of the issue fee or any maintenance fee due after

the date on which status as a small entity as defined in paragraph (a) of

this section is no longer appropriate. The notification that small entity

status is no longer appropriate must be signed by a party identified in

§

1.33(b)

. Payment of a fee in other than the small

entity amount is not sufficient notification that small entity status is

no longer appropriate.

(h)

Fraud attempted or practiced on the Office.

(1) Any attempt to fraudulently establish

status as a small entity, or pay fees as a small entity, shall be

considered as a fraud practiced or attempted on the Office.

(2) Improperly, and with intent to deceive,

establishing status as a small entity, or paying fees as a small entity,

shall be considered as a fraud practiced or attempted on the Office.

37 CFR 1.4  Nature of correspondence and signature requirements.

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(d)

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(4)

Certifications.

small entity, or pay fees as a small entity, shall be

considered as a fraud practiced or attempted on the Office.

(2) Improperly, and with intent to deceive,

establishing status as a small entity, or paying fees as a small entity,

shall be considered as a fraud practiced or attempted on the Office.

37 CFR 1.4  Nature of correspondence and signature requirements.

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(d)

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(4)

Certifications.

(i) Certification as to the paper

presented. The presentation to the Office (whether by signing,

filing, submitting, or later advocating) of any paper by a party,

whether a practitioner or non-practitioner, constitutes a

certification under

§ 11.18(b)

of

this subchapter. Violations of

§ 11.18(b)(2)

of this subchapter by a party, whether a practitioner or

non-practitioner, may result in the imposition of sanctions under

§ 11.18(c)

of

this subchapter. Any practitioner violating

§

11.18(b)

of this subchapter may also be

subject to disciplinary action. See

§

11.18(d)

of this subchapter.

(ii) Certification as to the signature.

The person inserting a signature under paragraph (d)(2) or (d)(3)

of this section in a document submitted to the Office certifies

that the inserted signature appearing in the document is his or her

own signature. A person submitting a document signed by another

under paragraph (d)(2) or (d)(3) of this section is obligated to

have a reasonable basis to believe that the person whose signature

is present on the document was actually inserted by that person,

and should retain evidence of authenticity of the signature.

Violations of the certification as to the signature of another or a

person’s own signature as set forth in this paragraph may result in

the imposition of sanctions under

§ 11.18(c) and

(d)

of this chapter.

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37 CFR 11.18  Signature and certificate for correspondence filed in the Office.

*****

ent was actually inserted by that person,

and should retain evidence of authenticity of the signature.

Violations of the certification as to the signature of another or a

person’s own signature as set forth in this paragraph may result in

the imposition of sanctions under

§ 11.18(c) and

(d)

of this chapter.

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37 CFR 11.18  Signature and certificate for correspondence filed in the Office.

*****

(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,

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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In order to establish small entity status for the purpose of paying

small entity fees, any party (person, small business concern or nonprofit organization)

must make an assertion of entitlement to small entity status in the manner set forth in

37 CFR

1.27(c)(1)

or

entions are warranted on

the evidence, or if specifically so identified, are reasonably

based on a lack of information or belief.

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In order to establish small entity status for the purpose of paying

small entity fees, any party (person, small business concern or nonprofit organization)

must make an assertion of entitlement to small entity status in the manner set forth in

37 CFR

1.27(c)(1)

or

(c)(3)

, in the application or patent

in which such small entity fees are to be paid. Under

37 CFR 1.27

, as

long as all of the rights remain in small entities, the fees established for a small

entity can be paid. This includes circumstances where the rights were divided between a

person, a small business concern, and a nonprofit organization, or any combination

thereof.

Under

37 CFR 1.4(d)(4)

, 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)

. It is not required

that an assertion of entitlement to small entity status be filed with each fee paid.

Rather, 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.

37 CFR

1.27(g)(1)

. Notification of a loss of entitlement to small entity

status must be filed in the application or patent prior to paying, or at the time of

paying, the earliest of the issue fee or any maintenance fee due after the date on which

status as a small entity is no longer appropriate.

37 CFR 1.27(g)(2)

.

Status as a small entity may be established in a provisional application

by complying with

37

CFR 1.27

.

Status as a small entity must be specifically established in each

application or patent in which the status is available and desired

of

paying, the earliest of the issue fee or any maintenance fee due after the date on which

status as a small entity is no longer appropriate.

37 CFR 1.27(g)(2)

.

Status as a small entity may be established in a provisional application

by complying with

37

CFR 1.27

.

Status as a small entity must be specifically established in each

application or patent in which the status is available and desired. Status as a small

entity in one application or patent does not affect any other application or patent,

including applications or patents which are directly or indirectly dependent upon the

application or patent in which the status has been established. The filing of an

application under

37

CFR 1.53

as a continuation-in-part, continuation or division

(including a continued prosecution application under

37 CFR 1.53(d)

for design

applications), 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.

Submission of a request for continued examination (RCE) under

37 CFR 1.114

does

not require a new determination or assertion of entitlement to small entity status since

it is not a new application.

Examiners may use the following form paragraph to notify applicant that

they may qualify for small entity status.