Patents for small and micro-entities

An inventor can make substantial profits from an invention by getting a patent. Though, the process of getting a patent is a long, complex, and costly procedure and might face many challenges to individuals and small or micro-entities. The patent office offers a reduced amount of fees when the applicant fulfills the requirements.

Position in the US:

A small entity means the individuals or an entity with not more than 500 workforce or a non-profit organization (NGO) or university, defined by the United States Patent and Trademark Office (USPTO).

The rules about the small entities are specified under 37 CFR $ 1.27.

To authorize as small entity they should be:

• An individual

• A Small business entity with not more than 500 workers

• A university

• A Non-profit organization (Section 501(c) (3))

If an applicant falls into anyone type then fees would be decreased to half of the actual amount. An applicant requires submitting a declaration of status with fees at the patent office. The applicant does not meet the criteria as a small entity if they have assigned or licensed the patent to an entity that does not qualify. Applicants who wrongly declared the status of a small entity can visage legal action and fine.

The America Invents Act (AIA) includes the status of micro-entities in 2003 to authorize fresh inventors to get protection for their inventions. Micro entity means typically the smallest type of entity. Hence micro-entities inventors are eligible for 60 to 75% reduced amount of fees.

Criteria for the micro entity are somewhat the same as a small entity except few.

• Patent applicants should represent that, they are not the inventor of more than four patents, including any category of a patent that it Plant, Utility and Design patent.

• A provisional Patent application does not calculate the previous employer's patents, total patents, and patents that are internationally granted.

• Also, the applicant should illustrate that, in the current year of applying, their gross revenue would be less than three times the median household income as informed by the Bureau of the Census.

• If the applicant has assigned the application then the same gross criteria for-profits applicable to the assignee.

• If the micro-entity receives a large amount of revenue from an institution of higher learning or they have to assign a patent to such institute then they satisfy the criteria of micro-entity.

• An institute of higher learning means a non-profit institute that provides 2-years programs or more post-secondary students as per the definition provided by USPTO.

Position in Japan:

Japan put forwards fees to applicants of academic, small companies, micro-entities, and start-ups. For applicants for academic, care should be taken to ensure that commercial activities do not reverse their eligibility criteria. Small entities can accumulate notably on costs. For example- the charges to apply for an examination fee and all allowances up to 10 years, resulting in an important discount. The concession for startups and micro-entities is yet bigger.

Position in India:

On 28^th February 2014, the latest notification issued by the Controller General of Patents, Designs, and Trademarks, the Department of Industrial Policy and Promotion (DIPP), and the Ministry of Commerce and Industry has amended the statutory fees for all patent-related filing.

Further, a major change has been dividing the applicants into 3 types:

1. Natural Individuals

2. Other than Natural Individuals- Small Entity

3. Other than Natural Individuals- Others except for a small entity

An individual pertaining to a patent is considered a natural person. In case the applicant is a Natural individual the cost is the lowest of all the three types. However, the costs have been raised by 60 % of the earlier applicable fee, before 28^th February 2014. The revised cost is effective from 28^th February 2014.

As per rule 2 of the Patent Rules, 2014, to be eligible as a small entity, an applicant who is employing in the manufacture or production of goods concerning any field must not have savings over 10 crores. (approx USD 1670000)

Likewise, an applicant who has employment to providing the services categorized under the Micro, Small, and Medium Enterprise Development Act, 2006, shall be excluded.

After including the Small entity status in the Patents Amendments Rules, 2014, a new line of perplexity has been arising that when the small entity status might change the status in the phase of prosecution when small entity assigns the patent to big organizations.

According to Rule 7(3A) of the Indian Patents Act, 2000, variation in charges should be given on acquired as the fresh applicant when small entity release its status from small to large after applying for a patent in India.

Procedure to be followed for declaration of a small entity:

• An applicant desiring to be authorized as a small entity has to file an affirmation in Form 28 and provide evidence connecting to the criteria of being a small entity.

• If an applicant wants to file a fresh patent application, a Form 28 must convoy form 1.

• Although, if the applicant has already applied for the patent, and wants to file any other form which draws the charges, Form 28 must be filed at least once convoying the form which the applicant wishes to file.

Conclusion:

In this article, we have seen how to segregate and identify the Small and Micro entities as specified in the regulations and according to the status of that entity the concession in fees awarded to encourage the inventor at a small scale. In the light of this article, Applicants who want to declare the status of a small entity required to provide related evidence and documents to assert such a category. A sole venture may have various statuses for diverse applications or patents, so determining the exact position for each case can be complex.

By-

Sushama Dilip Mhasurle